Design patents

For stronger design patents – less detail can give you broader coverage, so consider turning some solid lines into broken lines.

design patent
Design patents can be like the disappearing Cheshire Cat.

On the surface, design patents – a patent that covers the ornamental appearance of an article of manufacture, seem simple. File multiple drawings showing your design from various angles. Think about putting your design in an imaginary cube. You can then show all six sides of this imaginary cube and a perspective overview. If (under a famous court case called the Egyptian Goddess test), an ordinary observer (familiar with the prior art designs of similar products) will confuse someone else’s product with the patented design, then there is infringement.

Design patent law raises tough questions about pattern recognition. The problem is often explained by analogy to the Cheshire Cat from Alice in Wonderland.  How much of the cat do you need to see to identify it as a Cheshire Cat?

Different levels of detail

In a design patent, you show the required parts as solid lines. You show the optional elements as broken lines.  As you turn more and more solid lines into broken lines, the design becomes more general. But of course, at some point, the application then becomes too vague to be unique or even recognizable. The examiner will then likely reject your drawings. See “A Guide to Filing A Design Patent Application for more information.

If you want a broad coverage of your design, consider filing multiple versions.  Narrower but safer versions can have more solid lines. In riskier but more comprehensive versions, replace the less essential solid lines with broken lines.  Perhaps a subset or outline of your product is distinct enough to warrant patent protection?  If you think that your design may have multiple levels of detail, consider putting in broken lines to show the different levels of detail in the initial filing, since the USPTO won’t let you do it later.

Pros and cons of this type of patent

Compared to utility patents, design patents are relatively inexpensive to file and relatively easy to get.  However, again, the design patent is only for the artistic and non-functional aspects of the design. These patents now have a 15 year lifetime, and no maintenance fees are required.

Many countries also accept international design patents as well, but you usually only have six months to file.

A few more tips — the examiners have a well-developed ability to detect any inconsistencies between drawings. If the examiners identify this, they will reject the application as being ambiguous. You can avoid these problems by providing accurate 3D CAD files to the patent attorney and artist.

Design patent infringement

Design patent infringement
Three way visual comparison test

Design patent infringement isn’t just exact copying. Instead, the test is if an “ordinary observer” will see “substantial similarity.” 

Determining if a particular design of interest does or does not infringe upon another design patent is a tricky area of intellectual property law.

What is design patent infringement?

According to the 2008 Federal Circuit ruling in “Egyptian Goddess, Inc. v. Swisa, Inc. 543 F.3d 665: to infringe, a given design does not have to be an exact copy of another design patent. Instead, the question is one of “substantial similarity” under the “ordinary observer” test.

Great — what the heck is this, and how does this test determine design patent infringement?

The underlying idea is that customers looking to purchase a design patented product “Y” should not be confused by a similar-looking product “X.”

So as a practical matter, you should run this test using ordinary observers. Realize that if you are involved, it may be difficult for you to be entirely objective.  In this case, you are probably not a suitable “ordinary observer.”  Instead, determine if disinterested outsiders see “substantial similarity.”

Sometimes the differences between a given design and a particular design patent may be so high that no further comparisons are necessary. But sometimes the two devices are close.

The three-way visual comparison test

When two designs are close, a “three-way visual comparison test” can be useful. You can do this test by making a composite illustration showing the patented design on one side. Place the “accused design” (i.e., the device you are investigating) in the middle. Put the other devices representing the closest prior art on the other side.

Essentially it is a pattern recognition problem.  The idea is to use the prior art examples to instruct the ordinary observers as to how much variation is typical in this field.  Then the average observer can determine if the design of interest is overly close to the design patent of interest or not.

Consider the handheld blender designs in Braun Inc. V Dynamics Corp. 975 F.2d 815, in 1992.  As you can see in the above image, the “accused design” was visually much closer to the patented design than it was to the nearest prior art. The court determined that the “accused design” was infringing.

The best times to consider these design patent infringement issues are before you start producing and selling a new design. So if you have a new device that you are worried about, get the opinion of some neutral outsiders ASAP.  Indeed, consider running some focus groups as appropriate. If things look too close, consider making some further design changes, and trying again.

Also, consider filing your own set of design patent applications. To speed this up and make sure that the examiner looks at your competition, use the rocket docket. The rocket docket lets you directly cite the design(s) that most concern you. This way, you can generate proof that USPTO examiners have considered your competition, and still think your device is different. Your patents can reduce the chance of litigation because you will own IP in this area.

Amazon and IP disputes

Amazon IP - Amazon acting like its own court
The court of Amazon

Amazon.com is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks.

Amazon.com markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.

Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.

Trademarks:

The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.

The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name.  There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.

Copyrights:

Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.

Patents:

Amazon has recently announced a pilot patent dispute program.  The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense).  Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.

The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.

Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.

Hague international design patents

Hague countries international design patents
Hague international design patent countries. By L.tak, CC BY-SA 4.0

The Hague system allows you to use one application to file design patents in many countries simultaneously, but it is quirky and doesn’t work everywhere.

Are you thinking of filing your US design patent application outside the US?  For some countries like China and India, you will have to register locally. For other countries, such as Canada, Europe (EU), Japan, and Korea, consider using the Hague system.  In either case, think fast, because the deadline is often just six months after your initial filing.

What is the Hague system?  The Hague system (Hague Agreement Concerning the International Registration of Industrial Designs) is a series of international treaties. These treaties allow applicants from participating countries to register design patents in other participating countries directly.  If you or your company is not a resident of a participating country, you are out of luck.  You must get international coverage the hard way by finding a local representative and filing with the local patent office.

The US signed up in 2015.  Other countries are also in the process of joining but are not in yet. There are presently 66 countries participating.  So as the map shows, coverage is still somewhat uneven.

The rules are not uniform.

The drawing requirements and extent of post-filing examination can vary between countries.  The EU, for example, limits design drawings to a maximum of seven views, but otherwise, acts as a registration system that doesn’t require much subsequent effort.  By contrast, like the US, Japan also requires examination as well. So in Japan, as well as the US, the applicant must thus do additional activities and pay additional fees.

Unlike US design patents, the Hague system allows you to register multiple related designs in one application.  However, for those thinking of gaming the system for US design patents, realize that the USPTO will require you to select just one design. The US will require you to pay extra to examine any other versions.  Still, if you have a large number of variations, this is an option to consider.  However, note that the Hague system also publishes all design applications within six months of filing, while the US does not. So the Hague system offers less confidentiality.

Maintenance fees

You must pay maintenance fees on your Hague system registrations every five years. These last for up to a total of 15 years of total coverage. By contrast, after a US design patent has issued, the USPTO will give you 15 years of coverage with no maintenance fees.

How to file

Like other patents, the USPTO will accept Hague system patent applications and forward them on to the international office in Switzerland.  If your design patent has not yet previously passed a security review and obtained clearance, then you should (must) file via the USPTO first.  However, if you have clearance (e.g., you have previously filed in the US and received international filing approval), then use the Hague’s E-filing system. It is both quicker and easier.

Design patent rocket docket

design patent rocket docket
Design patent rocket docket

Want to get your design patent application examined quickly? The USPTO’s design patent “Rocket Docket” cuts examination time down to only a few months. But you must put more effort (and fees) into your initial filing.

The USPTO’s design patent “Rocket Docket” (their term for a request for expedited examination of a design application) is the best way to get a design patent quickly. It can cut the overall “waiting for examination” time down from about 13 months to about four months. So if you would like to speed up the process, file your design patent using the “Rocket Docket.”

Here, more than just extra fees are needed. The USPTO also wants you to expedite their prior art search process.

Why do they want this? Some countries (including the EU and some other Hague participating countries) merely register designs without checking them for originality. So these countries have a more “rubber stamp” type process. However, the USPTO examination process is not just a rubber stamp. They do their prior art search and review your drawings against different previous designs. Although most new design patent applications pass, the USPTO occasionally rejects some for lack of originality or obviousness.

It is hard to do prior art searches for design patents. Usually, you can do prior art searches by searching for matching keywords. However, unlike other types of intellectual property, designs have hardly any keywords. Design patents are almost 100% images, and often the unique keywords are in the title, and these are usually useless. Perhaps in the future, the USPTO will turn to Machine Vision/AI type searching methods and do direct image-based prior art searching. But they are not there yet.

So given these difficulties, the USPTO will make a deal with you. If, when you submit your design patent application, you also help them with their prior art search, they will go faster. This extra “Rocket Docket” fee is called a 37 CFR 1.17(k) fee. It usually is a few hundred dollars (presently about $450 for small entities).

How do you help the USPTO with their prior art search?

The USPTO requires a bona fide (i.e., a serious and competent) prior art search. They want documentation, on an SB27 form, of the various patent fields examined during this search. The USPTO also wants you to list the specific applications of your design. They also want you to report any relevant citations on an IDS (SB08) form. It is not a good idea to cut corners here, because if this part looks too sketchy, the USPTO may deny your Rocket Docket request.

So consider the Rocket Docket. Although it costs more, it speeds up the process. It is particularly useful if you are facing competitors. It is also helpful if your design is in an area where it is essential to introduce cutting-edge designs rapidly.

Intellectual property for cheerleaders: functional copyrights?

Copyrights for functional items?
Is the uniform decoration “functional”?

Functional copyrights? In Star Athletica v Varsity Brands, the Supreme Court ruled that copyrights can cover the industrial designs of clothing, 3D objects, and other useful (functional) things.

The boundaries between different areas of intellectual property, such as copyrights and patents, can be fuzzy. Copyrights, among other things, cover artistic images and 3D sculptures on various media or “articles”, but the artistic feature must be able to exist separately from any functional (useful) part of the underlying media. But there are blurred lines, and this is causing problems for software and manufactured goods as well.

Copyrights v design patents: Copyrights require only minimal originality, are cheap, and last for generations. But, if you want to claim an ornamental design for a functional (useful) item, this falls into design patent territory. Design patents have a higher threshold for originality, are more expensive, and only last for 15 years.

Some things, such as clothing, and other 3D designs that combine artistic/ornamental and useful/functional aspects, fall into multiple areas, but not always as one might predict. Clothing “knock-offs” exist because the overall pattern or cut of clothing is conclusively (legally) presumed to be functional, hence copyright exempt. So this goes into the design patent bin. However artistic fabric patterns can be copyrighted.

Which brings us to the cheerleaders, and the Supreme Court’s (SCOTUS) recently decided Star Athletica v. Varsity Brands case.  This teaches lessons that apply to other mixed artistic/functional things as well, such as 3D objects. So you folks with 3D printers, listen up!

Cheerleader uniforms have certain characteristic lines and colors, and Star Athletica copyrighted a number of these designs. Varsity Brands, possibly believing that fashion knockoffs are no big deal, copied them, got sued, and the case eventually made its way to SCOTUS.

Varsity had some interesting legal arguments – namely that the lines and colors were functional (no copyright) because they distinguished the uniform as a cheerleader uniform. However, SCOTUS didn’t buy it. They cited Mazer v Stein, an earlier 1954 SCOTUS case, where an artistic statute was ruled to have retained copyright protection even when used as a lamp base (made functional). Like this earlier case, SCOTUS ruled that if an otherwise copyrightable feature can be perceived as art separate from the useful article, then the feature can get copyright protection.

Unintended consequences?  So we can have an ornamental design for a functional item (design patent).  We can also have a useful item with an artistic feature (copyright); at least when the artistic feature can exist independently of the useful item. Confusing, and there may be some unforeseen economic issues. Although SCOTUS relied on the previous 1954 Mazar case, copyright laws have changed since 1954.  Copyright now automatically attaches to nearly everything and lasts nearly forever.

In any event, if you are planning on doing fashion knockoffs, be careful.  In fact, if you are any manufacturer planning on incorporating “an old art design” into a functional object, be careful.