A design patent is a patent granted on the ornamental design of a utilitarian item, providing IP rights on industrial design against unauthorized manufacture, use, reproduction, and/or import for designs that are substantially similar. Ornamental designs can include fabric patterns, carpet designs, jewelry, furniture, containers, object configurations, food shapes, fonts, and displayed computer icons. Intellectual property firms can advise you regarding the suitability of a design for obtaining a patent and an overall IP strategy.
In some jurisdictions, design patents are granted based on the design fulfilling criteria of novelty and non-obviousness in the patent application, while other countries register designs once formal application requirements are met – such as in Germany, France, Spain, and for Community Designs (similar to Community Marks – renamed the European Union trademark on March 23, 2016 – under the CTM System) at the Office of Harmonization for the Internal Market (OHIM – renamed to the EUIPO, the European Union Intellectual Property Office, on March 23, 2016).
The Hague System for the International Registration of Industrial Designs provides a practical business solution for registering up to 100 designs in 77 contracting parties covering 94 countries, through the filing of one single international application. On October 3, 2019, the Government of Israel deposited its instrument of accession to the Geneva Act (1999) of the Hague Agreement with WIPO’s Director General Francis Gurry. This makes Israel the 63rd member of the 1999 Act and 73rd member of the Hague Union. The 1999 Act entered into force in Israel on January 3, 2020.
In Canada, China, Japan, South Africa, and the United States, design patent applications are not published, maintaining secrecy until grant. Requests for extensions of non-publication can be filed during prosecution and after grant in some jurisdictions. Design patents have a term of 14 years from the date of issue of the patent application. The issue of functional use of a design (such as the Lego block) has raised objections of invalidity based on improper registration, drawing the line between aesthetic or decorative qualities and utilitarian aspects.
While forms of creative expression can be copyrighted, such copyrights must lack substantial practical utility, or be separable from the utilitarian object (such as an image printed on a functional surface). Design patents protect the ornamental aspects of such objects from being infringed, without the need to show derivation. Both copyrights and design patents, as well as trademarks and trade dress (signaling the manufacturer to consumers), can be used as part of an IP strategy to protect the creator’s rights to novel aspects of an object.
Design patents can be used as an integral part of the filing strategy by helping to strengthen designs into industry standards for functional elements such as touchscreen displays, electrical connectors, replaceable cartridges, cosmetic applicators, disposable medical components, and memory-storage modules. Moreover, the resounding affirmation of the courts in the Apple-Samsung patent war, which upheld the jury verdict, reinforces the power of design patents.
The decision highlights the strategic advantages of designs in that while they are subject to much less scrutiny than utility patents during prosecution, design patents are statutorily entitled to very large damage awards. As stated in proceedings, “Section 289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.” Thus, rather than a “sliver of the pie” being assessed from the royalty-stacking model that is applied with regard to utility-patent damage-awards calculations, a design patent puts the patent holder in the catbird seat with a potential “winner take all” outcome for damage-award allocation.
The sole test for anticipation in design patents is the “ordinary observer test.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009). According to this test, two designs are substantially the same if “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, … the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Id. (quoting Gorham Mfg. Co. v. White, 81 US 511, 528 (1871)). “The publication must show the same subject matter as that of the patent, and must be identical in all material respects.” Meaning that, “[i]n other words, the two designs must be substantially the same.” High Point Design, 621 F. App’x at 638.
FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP.
FPIP specializes in obtaining a patent in Israel, US, and EU jurisdictions – filing patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.
