What is a design patent? 

Design patents are a type of intellectual property protection used to protect a product’s ornamental or decorative aspects. They are granted by the US Patent and Trademark Office (USPTO). They are intended to protect the unique appearance of a product rather than the functional aspects of the design.

To be eligible for design patent protection a design must be new, original, and ornamental. This means that the design must not have been previously disclosed or used in public, and generally it must be more than a simple variation on an existing design.

Design patents do not protect the functional features of a design, such as the way a product works or the materials used to make it. Instead, they are intended to protect the aesthetic or decorative aspects of the design, such as the shape, pattern, or color of a product.

For example, suppose you have designed a unique, ornamental pattern for a phone case. In that case, you may be able to obtain a design patent to protect that pattern. However, if your phone case also includes functional features, such as a built-in stand or a special grip, you would not be able to obtain a design patent for those features. Instead, consider seeking protection for those functional aspects through a utility patent.

Overall, design patents can be a valuable tool for protecting the aesthetic aspects of a product. Still, they do not provide protection for functional features. 

What is the standard for design patent infringement?

In determining if a Design Patent is a way to protect your product, you must understand the standard for design patent infringement.

Design patent infringement occurs when someone makes, uses, sells, or imports a product covered by a design patent without the patent owner’s permission. To prove design patent infringement, the patent owner must show that the accused product is substantially similar to the patented design and that the accused product would be perceived as being the same as the patented design by an ordinary observer.

The standard for determining whether a design is “substantially similar” to a patented invention is known as the “ordinary observer test.” Under this test, a court will consider whether an ordinary observer, who is familiar with the prior art (the existing designs and products in the field), would be deceived into thinking that the accused product is the same as the patented design.

In determining whether an accused product would be perceived as being the same as the patented design by an ordinary observer, a court may consider various factors, such as the overall appearance of the products, the specific features of the designs, all prior desings, and the context in which the products will be used.

If the patent owner is able to prove that the accused product is substantially similar to the patented design and that it would be perceived as being the same by an ordinary observer, the court may find that there has been design patent infringement.

Overall, the standard for design patent infringement is intended to protect the rights of patent owners while also allowing for reasonable competition and innovation in the marketplace. If you believe that your design patent has been infringed, it’s a good idea to speak with an attorney who specializes in intellectual property law to determine the best course of action for protecting your rights.

Can a design patent protect a design that is functional?

In general, design patents are intended to protect a product’s ornamental or decorative aspects, rather than the functional aspects of the design. To be eligible for design patent protection, a design must be new, original, and ornamental. This means that the design must not have been previously disclosed or used in public, and it must be more than a simple variation on an existing design.

Design patents do not protect the functional features of a design, such as the way a product works or the materials used to make it. Instead, they are intended to protect the aesthetic or decorative aspects of the design, such as the shape, pattern, or color of a product.

For example, if you have designed a unique ornamental pattern for a phone case, you may be able to obtain a design patent to protect that pattern. However, if your phone case also includes functional features, such as a built-in stand or a special grip, you would not be able to obtain a design patent for those features. Instead, you might consider seeking protection for those functional aspects through a utility patent.

It’s worth noting that there is a limited exception to this rule for designs that are both functional and ornamental. If a design is primarily functional but also has some ornamental elements, it may be eligible for design patent protection as long as the ornamental aspects of the design are not dictated by the functional aspects of the product.

Overall, design patents can be a useful tool for protecting the aesthetic aspects of a product, but they do not provide protection for functional features. If you are interested in obtaining design patent protection, it’s a good idea to speak with an attorney who specialized in intellectual property law to determine the best approach for protecting your rights.

One of the key cases that discusses the fact that design patents do not protect functional features of a design is Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). In this case, the court considered a design patent that covered the ornamental design of a nail file. The patent owner, Egyptian Goddess, accused Swisa of infringing the patent with its own line of nail files.

The court ultimately found that Swisa’s nail files did not infringe the patent because they were functionally equivalent to the patented design. The court explained that design patents are intended to protect the ornamental or decorative aspects of a product, rather than the functional aspects of the design. The court further stated that a design is functional if it is “dictated by the function” of the product, meaning that the design is necessary to make the product work.

In this case, the court found that the design of the nail files was dictated by the function of the product, and therefore was not eligible for design patent protection. The court explained that the design of the nail files was necessary to allow the user to grip and file their nails and that the design was not primarily ornamental.

Overall, the Egyptian Goddess case is an important precedent that illustrates the principle that design patents do not protect the functional features of a design. 

How long does a design patent last?

Design patents are granted for a limited period of time, and the length of protection depends on several factors, including the date of the patent application and the type of design being protected.

Design patents filed on or after May 13, 2015 generally have a term of 15 years from the date of grant. This means that once a design patent is granted, the owner has the exclusive right to use, make, sell, or import the patented design for 15 years.

Design patents filed before May 13, 2015 may have a slightly different term. For these patents, the term is generally 15 years from the date of grant, but it can be extended for up to an additional five years if certain conditions are met.

It’s worth noting that design patents are only effective in the United States, and they do not provide protection in other countries. If you want to protect your design in other countries, you will need to file separate applications in each country where you want protection.

Overall, design patents provide a limited period of protection for the ornamental or decorative aspects of a product. 

What Damages are Available for Infringement of a Design Patent?

There are several types of damages that may be available for infringement of a design patent. These damages are intended to compensate the patent owner for any losses or harm that result from the infringement. Some of the types of damages that may be available in a design patent infringement case include:

1. Actual damages: Actual damages are damages that are directly related to the infringement and that can be calculated with a reasonable degree of certainty. For example, suppose the patent owner can prove that they lost a certain amount of profits as a result of the infringement. In that case, they may be able to recover those lost profits as actual damages.
2. Reasonable royalty damages: If the patent owner cannot prove actual damages, they may be able to recover a reasonable royalty as damages. A reasonable royalty is a damages award based on the value of the patented design and the profits that the infringer would have made if they had licensed the design from the patent owner.
3. Enhanced damages: In some cases, the court may choose to award enhanced damages to the patent owner if the infringement was particularly egregious or willful. Enhanced damages are damages that are intended to punish the infringer and deter others from engaging in similar behavior.
4. Attorney’s fees: In some cases, the court may award attorney’s fees to the patent owner if the infringement was particularly egregious or the case involved complex legal issues.

Overall, several types of damages may be available for infringement of a design patent. The specific damages awarded in a given case will depend on the circumstances of the case and the harm suffered by the patent owner. If you are involved in a design patent infringement case, it’s a good idea to speak with an attorney specializing in intellectual property law to understand your options and determine the best course of action.

In addition to the above, Injunctions and temporary restraining orders (TROs) are legal remedies that can be used in a design patent infringement case to prevent the infringing party from continuing to engage in infringing behavior. Injunctions and TROs are court orders that require the infringing party to stop infringing on the patent owner’s rights and to take specific actions to remedy the infringement.

Injunctions

Injunctions are court orders that require the infringing party to stop engaging in infringing behavior and to take specific actions to remedy the infringement. Injunctions are typically granted as a final remedy in a design patent infringement case after the court has found that the patent owner’s rights were infringed upon. Injunctions can be either permanent or temporary, depending on the circumstances of the case.

Permanent injunctions are typically granted after a trial, when the court has found that the patent owner’s rights were infringed upon and that the infringing party should be permanently prohibited from engaging in infringing behavior. Temporary injunctions, on the other hand, are typically granted on a preliminary basis before a trial takes place. They are intended to preserve the status quo and prevent irreparable harm to the patent owner while the case is pending.

TROs

Temporary restraining orders (TROs) are a type of injunction that is granted on a temporary basis to prevent the infringing party from engaging in infringing behavior while the case is pending. TROs are typically granted when there is a need to preserve the status quo and prevent irreparable harm to the patent owner. TROs are typically granted without notice to the infringing party and are intended to provide immediate relief to the patent owner.

TROs are typically granted for a very short period of time, usually no more than a few weeks. This is because TROs are intended to be a temporary measure and are not meant to be a final resolution of the case. After a TRO has been granted, the court may hold a hearing to determine whether to extend the TRO or to convert it into a permanent injunction.

Overall, injunctions and TROs are powerful remedies that can be used in a design patent infringement case to prevent the infringing party from continuing to engage in infringing behavior.

What is the procedure for obtaining a US design patent?

Obtaining a design patent in the United States involves several steps, including preparing and filing a patent application, paying the required fees, and responding to any requests or concerns raised by the US Patent and Trademark Office (USPTO). Here is a general overview of the procedure for obtaining a design patent in the United States:

1. Determine eligibility: The first step in obtaining a design patent is to determine whether your design is eligible for protection. To be eligible for a design patent, a design must be new, original, and ornamental. This means that the design must not have been previously disclosed or used in public, and it must be more than a simple variation on an existing design.
2. Prepare a patent application: Once you have determined that your design is eligible for protection, the next step is to prepare a patent application. A design patent application consists of several parts, including drawings or photographs of the design, a written description of the design, and any necessary formalities, such as a title and an inventor’s oath or declaration.
3. File the application: After you have prepared your patent application, the next step is to file it with the USPTO. This can be done online through the USPTO’s electronic filing system, or it can be done by mailing a paper copy of the application to the USPTO. You will also need to pay the required fees at this time.
4. Respond to any concerns raised by the USPTO: After you have filed your patent application, it will be reviewed by a patent examiner at the USPTO. The examiner will review your application to ensure that it meets the legal requirements for a design patent, and they may raise concerns or issues that need to be addressed. If this happens, you will need to respond to the examiner’s concerns by providing additional information or making changes to your application.
5. Grant and publication: If your patent application meets all of the legal requirements and the examiner is satisfied with your responses, the USPTO will grant your patent. Once your patent is granted, it will be published in the USPTO’s official gazette, which is a public record of all issued patents.

Overall, obtaining a design patent in the United States is a multi-step process that involves preparing and filing a patent application, responding to any concerns the USPTO raises, and paying the required fees. If you are interested in obtaining a design patent, it’s a good idea to speak with an attorney who specializes in intellectual property law to understand your options and determine the best approach for protecting.

What is a Claim in a Design Patent?

One of the most important parts of the design patent is the claim. The claims in a design patent are the specific parts of the patent that define the scope of the protection being sought. In a design patent, the claims are typically depicted in the patent’s drawings, and they are used to describe the specific elements of the design that are being protected.

In a design patent, the claim consists of a short statement called the preamble and a drawing of the design called figures.

The preamble of the claim in a design patent is a part of the claim that appears at the beginning of the claim and provides context or background information about the design being claimed. The preamble is typically followed by a statement of what the patent owner claims, known as the “transitional phrase.”

The preamble of the claim in a design patent serves several essential purposes. First, it provides context and background information about the design being claimed, which can help clarify the scope of the claim and the specific design elements that are being protected. Second, the preamble can help to distinguish the claimed design from the prior art, which is relevant to determining whether the design is eligible for patent protection.

Overall, the preamble of the claim in a design patent is an important part of the claim, and it serves several important purposes in defining the scope of the protection being sought. 

The design figures are typically depicted using lines, which can be either solid or dashed. Solid lines are used to indicate specific elements of the design that are being claimed, while dashed lines are used to indicate unclaimed elements or background features of the design.

The interpretation of solid and dashed lines in a design patent can be important in determining the scope of the protection being sought. For example, if a solid line is used to depict a specific element of the design, this may be taken as an indication that the patent owner is seeking protection for that specific element. On the other hand, if a dashed line is used to depict an element of the design, this may be taken as an indication that the patent owner is not seeking protection for that element.

Overall, the claims in a design patent are an important part of the patent, and the interpretation of solid and dashed lines can be crucial in determining the scope of the protection being sought. 

Why should a company file for design patents?

There are several reasons a company might file for design patents. Design patents are a type of intellectual property protection used to protect a product’s ornamental or decorative aspects. Design patents are intended to protect the unique appearance of a product, rather than the functional aspects of the design.

One of the main reasons why a company might file for design patents is to prevent others from copying or infringing on the company’s unique designs. If a company has a design patent, it has the exclusive right to use, make, sell, or import the patented design for a limited period of time. This can help the company to maintain a competitive advantage and protect its intellectual property assets.

In addition to protecting against copying and infringement, design patents can also provide value to a company by helping to build brand recognition and establish customer loyalty. By obtaining design patents for its products, a company can create a unique and distinctive look that sets its products apart from those of its competitors. This can help the company to build brand recognition and establish a loyal customer base.

Finally, design patents can also provide value to a company by adding to the company’s portfolio of intellectual property assets. This can make the company more attractive to investors and can increase the company’s value in the marketplace.

Overall, there are many reasons why a company might choose to file for design patents, including to prevent copying and infringement, to build brand recognition and customer loyalty, and to add value to the company’s portfolio of intellectual property assets. 

What are the most famous or well known design patents?

There have been many famous or well-known design patents throughout history, and the specific patents that are considered the most famous or well-known may vary depending on the industry and the context. Here are a few examples of famous or well-known design patents:

1. The Coca-Cola bottle: The Coca-Cola bottle is an iconic design that has been protected by a design patent since 1915. The bottle’s unique shape and appearance have helped to make it one of the most recognizable products in the world.
2. The McDonald’s Golden Arches: The McDonald’s Golden Arches logo is one of the most famous and recognizable logos in the world, and it is protected by a design patent. The arches are a key part of McDonald’s brand identity and have helped to make the company one of the most successful fast food chains in the world.
3. The Nike Swoosh: The Nike Swoosh is another well-known design that has been protected by a design patent. The Swoosh has become one of the most recognizable logos in the world, and it is closely associated with the Nike brand.
4. The Apple iPod: The Apple iPod is a well-known design that has been protected by a design patent. The iPod’s sleek, minimalist design helped to make it one of the most popular electronic devices of all time.
5. The Google logo: The Google logo is another well-known design that has been protected by a design patent. The logo, which features a simple, colorful design, is one of the most recognizable logos in the world and is closely associated with the Google brand.

Overall, there have been many famous or well-known design patents throughout history, and the specific patents that are considered the most famous or well-known may vary depending on the industry and the context. 

What are the most common mistakes that applicants make in a design patent?

There are several common mistakes that applicants may make when filing for a design patent. Some of the most common mistakes include the following:

1. Failing to depict the claimed design properly: In a design patent, it is important to clearly and accurately depict the claimed design in the drawings of the patent. If the drawings are unclear or inaccurate, it may be difficult for the US Patent and Trademark Office (USPTO) to understand the scope of the protection being sought, which can lead to delays or rejections.
2. Failing to describe the claimed design properly: In addition to accurately depicting the claimed design in the drawings, it is also important to clearly and accurately describe the design in the specification of the patent. If the description is vague or unclear, it may be difficult for the USPTO to understand the scope of the protection being sought, which can lead to delays or rejections.
3. Failing to conduct a comprehensive search: Before filing for a design patent, it is important to conduct a comprehensive search to determine whether the design is eligible for patent protection and if so how broad is the protection. If you fail to conduct a thorough search, you may not discover prior art that could impact the eligibility of the design for patent protection.
4. Failing to respond to office actions (letters or rejections or objections) properly: If the USPTO raises issues or concerns with the design patent application, it is important for the applicant to properly respond to these issues in a timely manner. If the applicant fails to address the concerns raised by the USPTO adequately, it may result in delays or rejections of the application.

Overall, there are several common mistakes that applicants may make when filing for a design patent. If you are considering filing for a design patent, it’s a good idea to speak with an attorney who specializes in intellectual property law to help you avoid these mistakes and ensure that your application is as strong as possible.