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.

International design patents

Good news for US inventors who are interested in filing international design patents.

Design patents are for unique designs for something that otherwise functions according to prior art.  In the US, inventions that function differently from prior art are covered by “utility patents”, while the unique ornamental appearance of a design is covered by a “design patent”.  Design patents are relatively easy to get, and presently last 14 years.

Although the Patent Cooperation Treaty (PCT) has provided utility patent inventors and owners with a simple (if expensive) way to begin to file their utility patents in various countries, the PCT system does not provide a mechanism by which an American design patent can be filed internationally.  This was a nuisance, because design patent standards can differ substantially from country to country, which made the process of obtaining international design patents (industrial design applications) complex and expensive.

Fortunately this is about to change.  On December 19, the Hague Agreement Concerning the International Registration of Industrial Designs was signed into law in the US.  The Hague Agreement can be viewed as a “PCT-like application” for design patents.

In addition to providing a standardized procedure for international filings, the Hague Agreement also extends the life of design patents to 15 years.

This agreement has actually been in the works for some time.  The original Hague Agreement was established in Geneva in 1999, and was ratified by the Senate in 2007!