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More back to the basics: design patents

On Behalf of | May 25, 2018 | Patent Law

Last week we talked about the most common type of U.S. patent — the utility patent. In that post, we described that utility patents protect invented objects and processes, speaking broadly. Today, we will touch more on the design patent. 

Our last post included a good example of the difference between utility and design patents. Nike recently sued Puma, alleging that Puma violated Nike’s utility patent on the knitting method it uses to make the material in its shoes, an example of a utility patent on a process.

If Nike said that Puma had infringed on a design patent for shoes, it would mean that the way the shoes are styled was illegally copied — a completely different aspect of the same product that can be protected by a design patent. Different characteristics of a single article can be properly protected by both kinds of patents when appropriate. 

To maintain a utility patent, the owner must pay maintenance fees, but this is not required to maintain a design patent. 

What is a design patent? 

Federal patent law defines a design patent as “any new, original and ornamental design for an article of manufacture.” Like a utility patent, for a design to be patentable, it must be novel (new and original) and nonobvious (sufficiently different from previous designs so that someone with “ordinary skill” in the field would not think it was an obvious variation of a previous design). 

The design patent generally protects the owner’s rights in the design for 15 years. 

Design patents concern the visual appearance of an object such as ornamental features or “visual characteristics embodied in or applied to an article,” as opposed to the thing itself (to quote the U.S. Patent and Trademark Office or USPTO). 

Specifically, a design patent may apply to the “configuration or shape of an article, to the surface ornamentation” or to a combination of these. Patentable designs are protected as part of the object they decorate, but not as abstract designs separate from the things they adorn. 

Logically, a patent application on a design must include a drawing or photo with comprehensive coverage of the entire design. The USPTO has detailed requirements for the features of these drawings and photographs, so consulting an experienced patent attorney for help preparing a design patent application is important.

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