Friday, June 18, 2010

Design Patent Relationships with Other Forms of IP Protection

Design patents protect the new and original ornamental characteristics embodied in, or applied to, an article of manufacture. Although the protection offered by a design patent is somewhat limited, recent decisions such as Crocs, Inc. v. International Trade Comm’n. and Egyptian Goddess, Inc. v. Swisa, Inc. have bolstered the ability of patent owners to prevent others from making, using, or selling products that closely resemble the patented design. This form of protection can be especially valuable for products that have achieved commercial success and widespread consumer recognition, and are thus more susceptible to imitation. A design patent can represent one facet of a multi-faceted approach to guarding your IP. Therefore, it is worth considering the interplay between design patents and other types of protection.


One area of overlap exists between design patents and copyrights. The ornamental design of a product may also be a copyrightable work of art, and such a copyright can coexist with a design patent. Furthermore, section 1301 of the copyright statute explicitly states that “the designer or other owner of an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public may secure the protection provided by [the copyright statute].” While that sounds intriguing, Congress has thus far limited the scope of “useful articles” to designs of vessel hulls and decks, though there have been efforts to expand copyright to other types of articles, such as fashion designs for clothing, handbags, belts and eyeglasses. A discussion of what constitutes an “original design” is beyond the scope of this article, but it is generally defined as any distinguishable, non-trivial variation over a prior work of art. Furthermore, neither copyright nor design patent protection extends to designs that are dictated solely by a utilitarian function. Also excluded from section 1301 are illustrations that are not embodied in an article, such as drawings, photographs, brochures, etc. Copyright for a design of a useful article begins upon registration with the U.S. Copyright Office and expires after about ten years, whereas a design patent becomes effective after examination and issuance, and is valid for a term of 14 years from grant.

Several important distinctions occur with respect to infringement of copyright. It is an infringing act to make, use or sell an article embodying a copyrighted design; however, infringement only occurs when the infringer had knowledge that the design was copyrighted. This mirrors other aspects of copyright law, where “copying” is the key to proving infringement. The mere coincidence that two articles share the same design is not enough. In this regard, design patents offer a more powerful form of protection because, once the patent issues, the world is placed on notice that the design is patented, and the lack of knowledge of an infringer is not a defense to infringement. Another notable distinction is that the Copyright Office does not assess the originality of a design before issuing a Copyright registration. Therefore, a copyright owner has the burden of establishing the originality of a design during litigation. Nonetheless, an applicant for a design patent need not choose between having either the patent or a copyright, because both can work in harmony to protect the same design. Additionally, the USPTO will allow the inclusion of a statutory copyright notice within the design patent.


Design patents may also overlap with trademarks, which can be used to associate a design with a unique source and also to exclude imitators and free-riders. In fact, a design patent and a trademark can exist for the same article. Design patents and trademarks coexist peacefully because the rights acquired from each are neither dependent nor conditioned upon the other. Trademarks for designs which are in continuous use may be valid indefinitely. As with copyright, the USPTO allows trademark notices to appear in a design patent as long as the trademark is in legal use under federal trademark law.

Utility Patents

Not to be discounted is the relationship between design patents and utility patents. While each type of patent serves a different purpose, some inventions may qualify for both types. However, care must be taken to avoid a situation where one patent anticipates the other (i.e., the design is no longer novel in light of its disclosure in an earlier patent). For example, if a utility patent or patent application includes drawings showing potentially patentable ornamental designs of the invention, those drawings could become prior art that would lead to a rejection of a design patent application claiming the same design. This is an important consideration for applicants who may initially be focused on a traditional utility application, and then later (perhaps after achieving some success with the product) decide that the invention’s design is also quite valuable. While copyright and trademark may still provide avenues to pursue copycats, the relative inexpense of acquiring a design patent and the concomitant benefits (e.g., injunctions and damages) may counsel toward filing both utility and design patents for the same invention in situations where the ornamental design of the invention is unique.

One method of preserving rights across multiple patents is to utilize the statutory right to claim the benefit of an earlier filing date of another patent application. Design patents may claim priority to utility patents, and vice versa. However, a design patent may not claim priority to a provisional utility patent application (and there is no such thing as a provisional design patent application). As with utility patents, the design patent application must be filed during the pendency of any U.S. utility application to which it claims priority.


The USPTO processes more than 25,000 design patent applications per year, but this number is a drop in the bucket compared to utility patent and trademark applications, as well as an unknown but presumably huge number of copyrighted designs that are constantly being created. This suggests that many are not taking advantage of the opportunity to diversify their IP protection by considering design patents.

A food storage container having both a utility patent (top) and a design patent (bottom).


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