Even a Patent Can Be Decorative
Column Topic:
Legal “Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor.” 35 U.S.C. § 171.
If your company produces products that are unique in appearance, and your primary concern is the direct copying of those products by competitors, design patents are a useful tool for warding off (or punishing) copycats. Design patents are directed to protecting the cosmetic or decorative features of a product’s design. In contrast to utility patents that protect an invention that is a machine, process, composition of matter, or article of manufacture, design patents protect how an article of manufacture looks. Three kinds of designs are eligible for design patent protection:
• A design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia)
• A design for the shape or configuration of an article of manufacture
• A combination of the first two categories.
A picture is not patentable as a design because the patentable design must be incorporated into an article of manufacture. I recently saw a teapot shaped to look like two dancing cartoon hippos at a local consignment shop. The teapot could be the subject of a design patent application while a companion cartoon drawing of the same two dancing hippos could not.
Design patent protection is based on a design patent application, which includes drawings of the design for which patent protection is sought, a specification and a single claim. The drawings must meet exacting Patent Office rules. The specification of a design patent application is much simpler than that of a utility patent application. Therefore, while offering narrower protection than a utility patent, a design patent can generally be obtained at a significantly lower cost. Design patent protection allows you to file suit against a competitor who copies your patented design and attempt to recover monetary damages and/or seek an injunction ordering the competitor to stop producing and selling the infringing design.
Thanks to a recent appeals court decision, businesses whose products have a unique cosmetic appearance may find design patents more appealing than in the past. The decision by the Court of Appeals for the Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc. should make it easier for the owners of design patents to enforce those patents because it simplifies the test for proving infringement of a design patent.
Prior to Egyptian Goddess, a potentially infringing product design was required to satisfy both an “ordinary observer” and a “points of novelty” test to infringe the patented design. Under the ordinary observer test, an accused design was infringing if an ordinary observer, exercising ordinary care, would find the accused and patented designs substantially similar. If the average consumer would be induced by the similarity of the designs to buy the accused design, believing it to be the patented design, the design patent is infringed. The Federal Circuit in Egyptian Goddess eliminated the points-of-novelty test from the analysis, instead relying solely on the ordinary observer test to find infringement, ultimately making it easier to demonstrate infringement of a design patent on a competitor’s knock off product.
2009-12-07 01:00:00 -0500
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