July 2021
Natural Products Consulting
By Virginia L. Carron; Elizabeth D. Ferrill; Sydney N. English
Design patents have been around a long time. The first design patent was issued in 1842 and, in 2019, the U.S. Patent and Trademark Office (USPTO) issued more than 34,000 of them. Designs can be protected with design patents (or design registrations, as they are also called) in many other countries in the world.
The World Intellectual Property Organization reports that over 4 million design patents/registrations were in force by 2020. Companies selling products overseas or those having their products manufactured overseas turn to design patents as an elegant way of building a worldwide safety net to protect their products’ appearance from duplication or “inspired” follow-on products made by others.
Design patents are, as you would expect, a protection for a design. Simply put, design patents protect the way an article looks, as opposed to utility patents, which protect the way that an article works or is used.
Design patents cannot protect the functionality of a product—that is the providence of the utility patent. If you asked someone on the street what a patent is, utility patents are probably what they would describe. But design patents protect the “ornamental design” of an underlying product, known in the law as an “article of manufacture.”
A claimed design must be “primarily ornamental,” meaning that the overall appearance must not be dictated solely by function.[1] When there are alternative designs that provide the same function, then the design of the article is more likely to serve a primarily ornamental purpose. For example, design patents may claim the shape of a bottle or packaging, the shape of a food product, or the ornamental decoration on a surface of a product, such as packaging decoration.
The U.S. Patent and Trademark Office (“USPTO”) classifies design patents into thirty-three classes, including “apparel and haberdashery,” “edible products,” “tools and hardware,” and “games, toys, and sporting goods.” The USPTO also further subdivides each class into subclasses. The subclass for “edible products” includes candy, pasta-type foods, and bread- or cake-type foods.
Design patents are particularly useful for established industries, like many food companies, because of their ability to protect a new design for what might be an old product. While there are still innovations qualifying for utility patents every year, much of the food industry is about perfecting the craft or about presenting existing food products to the public in innovative packaging.
U.S. Design Patent D641,642, Condiment container
In addition, given the nature of food, design patents would likely protect the design of the package it is sold in, or the related products used to serve or promote the sale of food products. The shape of the bottle on a shelf can make a beverage stand out or blend in with the crowd. Famously, Coca Cola has demonstrated the usefulness of distinctive packaging through the years in the soft drink industry, dating all the way back to the design patent on their first contour bottle back in 1915.
U.S. Design Patent No. D48,160, Bottle or Similar Article
Like utility patents, the USPTO issues a design patent after an examination process that includes consideration of the quality and clarity of the drawings of the design and whether the design is new and not an obvious variant over existing designs.
A design patent may claim all or only an innovative part of a design. And because design patents can include only one patentable design per patent, designers often find it useful to get more than one design patent per product—covering different sub-aspects or iterations of a single product. Luckily, design patents typically cost only a fraction of their utility patent cousins to prepare and prosecute. Also, design patents, on average, issue in about 15 to 18 months from the time of filing—substantially faster than utility patents. A design patent remains in force for 14 years from the date of issue.
In the United States, design patents are granted through an examination process where the applicant talks back and forth with the U.S. Patent and Trademark Office (PTO) about whether a design patent should be granted.
The process for obtaining a design patent begins with a patent application filed with the USPTO. The design must be new, not an obvious variant of an already existing design, not solely dictated by function, and clearly depicted. Once the PTO agrees that the design meets these requirements, it will issue a design patent which grants the owner 15 years during which no one can make a product with the patented design or one that is substantially the same.
Either the inventors or an assignee of the patent application may apply for a design patent.[2] Generally, the application must include a title, figures, a specification with a brief description of the figures, one claim, a list of all inventors, and a signed declaration of the inventors.[3] U.S. law requires that the inventors be named on the application.
Unlike utility patent applications, design patent applications recite only one claim.[4] But, the specification may include more than one alternative embodiment if the embodiments involve a single inventive concept.[5] If an application contains more than one inventive concept, the USPTO will require the applicant to choose (“elect”) one concept and cancel the others.[6] The unelected concepts may be pursued in divisional applications, which must be filed and prosecuted separately, and there are certain legal consequences if the applicant chooses not to pursue all the concepts.
Drawings are the focal point of the design patent application process. And by law, the application must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design.[7] In practice, this means that a design patent application usually includes a depiction of the top, bottom, front, rear, left and right sides, and perspective views.
U.S. Design Patent No. D834,781, Pretzel Cracker
In some instances, however, additional views may be necessary to fully disclose the design. When two views are the same (or mirror images), such as side views, only one view needs to be depicted and the specification may explain that the other view is, for example, a mirror image. Where a view is not seen in ordinary use (such as the bottom of a large object, like a refrigerator or car), the application may omit this view, provided that an appropriate explanation is included in the specification.
Also, while the applicant need not claim the entire article of manufacture, the whole article must be depicted. The scope of the claim is primarily conveyed in the lines and shading of the figures. Lines can be represented in either solid or broken form. Solid lines constitute the claimed design, while broken lines (i.e., dashed or dashed-dot lines) are usually included to show visible environmental structure or to define boundaries.[8] Broken lines of even length (i.e., dashed lines) are used to define environmental structure that are elements related to the claimed design but do not form a part of the claimed design.[9]
U.S. Design Patent No. D877,446, Dog Biscuit (showing the “LA” logo in broken lines)
Alternatively, broken lines of uneven length (i.e., dashed-dot lines) are used to define boundaries that mark where a boundary does not exist in reality, but it is understood that the claimed design extends to the boundary, but excludes the boundary line itself.[10] The figure below illustrates a broken line used to define an unclaimed boundary.[11]
Design patent applications in the United States should also include shading to show the character or contour of the surfaces represented.[12] Surface shading is perhaps more common in U.S. design patent applicants than in design registrations in other countries, where shading may not be required (e.g., European Union) or is not permitted (e.g., China). An example of a figure depicting a tube excluding shading (top image) and the same figure including shading (bottom image) is shown below.
Once filed, the design patent application is assigned to a patent examiner in the USPTO’s design patent technology center for determining compliance with formalities and patentability. Following initial examination, the examiner will review the application for substantive compliance with U.S. law, including novelty under 35 U.S.C. § 102, nonobviousness under 35 U.S.C. § 103, and certain disclosure and clarity requirements under 35 U.S.C. § 112. If the USPTO determines that an application contains more than one design, it will require the applicant to elect one design.[13] As noted above, applicants may file divisional applications on the unelected designs.[14]
Once the application is examined, the USPTO will issue one or a series of office actions detailing additional information required and/or substantive issues affecting patentability. During this prosecution phase of the application process, the applicant may argue against the examiner’s reasoning and usually amend the application to overcome the cited issues affecting patentability. Amendments to the application’s drawings are limited in certain ways. For example, environment-related lines (i.e., evenly broken lines) are considered part of the original disclosure and may be converted to solid lines during prosecution, and vice versa.[15] Boundary-related lines (i.e., unevenly broken lines), however, generally may not be converted to solid lines because they do not represent actual structural features.[16] If converted, the examiner would likely deem the change as an addition of “new matter,” absent certain circumstances. New matter is anything added to the claim, drawings, or specification that was neither shown nor reasonably conveyed in the original application.[17] If new matter is added to the application during prosecution, the application will not be entitled to the filing date for priority purposes, and any intervening prior art between the date of filing and the date that the new matter was added will need to be considered.
Regarding timing, a first office action is mailed, on average, about ten months after filing. Depending on the type of action, the period for response may be one to six months. If the examiner issues a final rejection, applicants may appeal to the USPTO Patent and Trial Appeals Board and eventually the U.S. Court of Appeals for the Federal Circuit. If the examiner allows the claim, the allowed claim issues as a design patent, after the payment of an issue fee. Approximately fifty percent of design patents are granted without the USPTO raising any objections. On average, design patents issue about 20.4 months from filing.[18] U.S. design patents have a term of fifteen years from the date of issue.[19]
Filing expenses related to the application include preparation of drawings or photographs, representative’s fees in preparing the application, and government filing fees. As of 2021, the government filing fees amount to at least $220. Additionally, there are fees for various circumstances (such as color photographs or filing an inventor declaration after filing) and for extensions of time to respond to office actions. As of 2021, the issue fee for a design patent is $740, while, unlike U.S. utility patents, there are no renewal fees after the design patent issues.[20]
When applying for a design patent, the applicant should consider three critical points regarding priority dates and bars to patenting. First, in 2013, the U.S. changed from a first-to-invent to a first-inventor-to-file system. That is, a design may be barred if it was patented, described in a printed publication or in public use, on sale, or otherwise available to the public, anywhere in the world, before the effective filing date of the application.[21] Second, any commercial use of a product’s design prior to any statutory grace period and prior to filing can lead to a bar on patenting.[22] Third, design patents may not claim the benefit of a provisional application, but may claim the benefit of an earlier-filed non-provisional design or utility application, provided there is sufficient support in the priority application.[23]
While disclosing a single image of a design (such as on a website or in a brochure) might not sink a later-filed design patent application, trade shows are particularly problematic because typically the public has had ready access to all parts of the design. Moreover, in today’s media environment, journalists, bloggers, and even conference organizers will likely post or tweet your design before you may have even put it on your own website. Once the genie is out of the bottle, it is not possible to put it back in.
Moreover, trade show attendees alone might not be the only concern when it comes to public disclosure. Often, companies will disclose designs during usability studies or market or consumer testing. In these cases, companies should use nondisclosure agreements whenever a prerelease design leaves the building, because these disclosures could be considered public. If consumer testing allowed participants to take the product home, then it is important to consider that the design might be shown to other members of the household or neighbors and friends. But despite these agreements, unauthorized disclosures may still occur. The U.S. Patent and Trademark Office has considered unauthorized disclosures to be invalidating prior art in the past.[24] So, you might be left with a contract remedy against these unauthorized disclosers, but your patent rights might not be so lucky.
United States design patent laws set forth several options for review of a granted design patent. Applicants may request a certificate of correction to correct clerical or minor mistakes made through the fault of the patent office or through the fault of the applicant, provided that the mistake occurred in good faith.[25] For more substantive corrections, the patent office can reissue a patent with corrected drawings or a corrected specification.[26] Third parties may also request that the patent office review a patent for patentability through what is known as an ex parte reexamination.[27] Third parties may also request inter partes review, which is an adversarial proceeding limited to asserting that identified patents or printed publications render the patent invalid.[28] Post-grant review is yet another option, which is an adversarial proceeding with fewer limitations on invalidity grounds that can be asserted.[29] The costs and time delays, as well as the complexity of the proceeding, associated with each type of review vary considerably.
In the United States, federal law governs design patent infringement actions. An action for enforcement of a design patent must be filed in one of the ninety-four federal U.S. district courts distributed geographically throughout the country. In some cases, plaintiffs can file an action in the U.S. International Trade Commission, which is a regulatory body that controls imports into the United States.[30] Appeals for design patent infringement decisions from either type of forum are filed in the U.S. Court of Appeals for Federal Circuit. Further appeals are submitted to the U.S. Supreme Court.[31] The time to resolution varies greatly by geographic district—ten months to four years to trial, not including an additional 1.5 years for most appeals to the Federal Circuit.
The test for design patent infringement in the United States is the “ordinary observer test.” The test is conducted from the perspective of the ordinary observer who gives such attention as the purchaser usually gives, depending on the cost of the article, and is deemed to be familiar with the similar prior art designs.[32] Patented designs are infringed by an accused product when the ordinary observer would find the two substantially the same, such that the observer would be deceived into purchasing the accused product supposing it to be the patented design.[33]
If a product is found to infringe, then a court can either order the maker of the product to stop making the product or to pay the owner of the design patent money, known as “damages.”[34] Damages for infringement can be quite substantial. As was recently affirmed by the Federal Circuit in a recent prominent case involving Apple and Samsung, a court can award design patent owners the total profits of an infringing product. In the alternative, a court could award the design patent owner a reasonable royalty on future sales of the infringing product or the design patent owner’s lost profits (which can be helpful instances where the infringing product has a lower profit margin). Under certain exceptional circumstances, a successful litigant may be entitled to attorneys’ fees and costs.
Typically, design patents are cheaper, quicker, and easier to obtain than utility patents. In some instances, they may be easier to enforce than trademarks. Design patents are attainable even for smaller companies with more niche markets.
However, you should be careful that your design patents are not “cheap.” There are many pitfalls during prosecution which an unaware applicant may stumble across. Careful attention has to be paid to the drawings which define the scope of the protection the design patent will give you. In particular, many design patents issue with a trademark or logo included in the design. However, a competing natural food company will likely use their own trademark, making your protection less useful. It is important to retain an experienced design patent attorney to help guide you.
[1] Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002).
[2] 37 C.F.R. §§ 1.41, 1.46.
[3] See 37C.F.R. § 1.153; Manual of Patent Examining Procedure (MPEP) § 1503.
[4] 37 C.F.R. § 1.153. The claim usually states: “An ornamental design for [the article of manufacture], as shown and described.”
[5] In re Rubinfield, 270 F.2d 391, 392-93 (C.C.P.A. 1959). The legal standard for a “single inventive concept” is somewhat elusive. For example, the MPEP, at § 1504.05(II)(A), instructs patent examiners to consider “[e]mbodiments that are patentably distinct over one another” as more than one inventive concept.
[6] See 35 U.S.C. § 121.
[7] See 37 C.F.R. § 1.152.
[8] See 37 C.F.R. § 1.152.
[9] See MPEP § 1503.02 (III).
[10] See MPEP § 1503.02 (III).
[11] See U.S. Patent No. D680,435.
[12] See 37 C.F.R. § 1.152.
[13] See MPEP §§ 1504.05, 800.
[14] See id.
[15] See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
[16] See MPEP § 1503.02 (III).
[17] See 35 U.S.C. § 132; 37 C.F.R. § 1.121; MPEP § 1504.04.
[18] See USPTO, Design Data February 2021.
[19] See 35 U.S.C. § 173.
[20] See 37 C.F.R. 1.362(b); MPEP § 2504.
[21] There is a one-year grace period for disclosures made by the inventor or by another who obtained the design from the inventor. The exact bounds of this grace period have not yet been circumscribed by U.S. courts. Therefore, the best practice is to file a design patent application before disclosing a new design to anyone outside of your company.
[22] The Federal Circuit has held that even experimental commercial use of an ornamental design can bar patenting. See Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192 (Fed. Cir. 1994) (“We see no way in which an ornamental design for an article of manufacture can be subject to the ‘experimental use’ exception applicable in the case of functioning machines, manufactures, or processes.” (quoting In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988))).
[23] See 35 U.S.C. § 172; 37 C.F.R. § 1.78(a)(4); MPEP § 1502.
[24] Ex parte Ford Global Techs., LLC, No. 2010-004965 (B.P.A.I. June 3, 2010).
[25] See 35 U.S.C. §§ 254, 255.
[26] See 35 U.S.C. § 251.
[27] See 35 U.S.C. §§ 302-307.
[28] See 35 U.S.C. §§ 311-319.
[29] See 35 U.S.C. § 321-329.
[30] While the U.S. International Trade Commission can control imports into the U.S. and issue injunction-like relief, it cannot issue relief in the form of money damages.
[31] The U.S. Supreme Court has discretion over its docket, and it is rare for the U.S. Supreme Court to decide to hear patent cases.
[32] See Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1363 (Fed. Cir. Jan 25, 2013).
[33] See id.
[34] See 35 U.S.C. §§ 282, 283, 289.
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