Design patents are a valuable, yet often overlooked, form of intellectual property (IP) protection that can play an important role in aligning a company's IP with its business strategy. Design patents are typically utilized in industries where the aesthetic qualities of the product can enhance the brand and create customer loyalty, such as consumer products. However, design patents are a form of IP that should be considered by all industries as they can improve your IP portfolio in a cost-effective manner.
Although design patents have a shorter lifespan (14 years from date of issue by the USPTO), they allow inventors the opportunity to strengthen their inventions by protecting the ornamental appearance or visual characteristics related to the non-functionality of inventions. The ornamental appearance or visual characteristics include a configuration or shape of an article, the surface ornamentation on an article, or both. Thus a design patent helps strengthen IP protection by looking beyond the structural and functionality of an invention that can be separately captured by utility patents.
Generally, requirements for obtaining a design patent include that the design be ornamental, novel, and not obvious to a designer of ordinary skill of the type of product in question. Additionally, the requirements include filing drawings or photographs that define the scope of patent protection. These drawings or photographs typically demonstrate what is "new" about the invention in the broadest possible terms, while distinguishing over what is shown in the prior art. It is important to note that careful procurement of the original design patent can result in a broad scope of protection, one which can protect not only the particular embodiment of the design, but perhaps the general design concept as well.
Four key points that support considering the strategic advantages of filing design patents include:
Between fiscal year 2005 - 2009, design patents had an allowance rate of about 90%, based on the most recent USPTO annual report.
As an example, consumer product companies like Procter & Gamble (P&G) have created a broad IP portfolio around their Gillette brand and razor blade technology. In order to contribute to Gillette's brand recognition and strong IP protection in the market place, P&G has protected and nurtured their products using utility patents, design patents, and other forms of IP such as trademarks in various parts of the world, supporting their 70% share2 of the approximate $10B safety razor market.
For instance, P&G holds utility patents that capture IP around the method of making the razor blades (e.g., US 7,665,199); and the razor blade unit or assembly itself (e.g., US 7,178,243). Moreover, they have protected the design of their razor blades by utilizing design patents (e.g., USD422751). Additionally, Gillette/P&G has also enforced their IP to maintain their position in the razor blade market (See Gillette Co. v. Energizer Holdings Co. (Fed. Cir. 2005)). Thus, by utilizing various forms of IP and by enforcing their IP, P&G has built brand confidence and customer alliance with their Gillette products.
Figure 1. US6,212,777 - "Safety Razors" Gillette Company
In conclusion, the use of design patents, in conjunction with utility patents and other forms of IP, can strengthen and enhance the value of a company's IP portfolio and brand. Design patents should be leveraged as part of an overall IP Strategy to support alignment between business, technical and IP goals.
Consumer-imputed meaning of a brand name or symbol, different from its commonly
understood (primary) meaning. Under copyright law, an already common name or
symbol must acquire distinctiveness through a secondary meaning for it to be
granted exclusive trademark rights.