Strategy for Obtaining Broad Design Patent Protection

Jul 2000

by James D. Hamilton 1 and Christopher D. Ward

I. Introduction

United States patent laws define three distinct types of patent protection, namely utility patents, plant patents, and design patents. A design patent allows an inventor to protect the ornamental aspects of an article of manufacture. This area of patent law is relatively underused,2 and yet can provide very significant protection for an invention against an infringing competitor that attempts to confuse consumers into purchasing their product by mimicking the ornamental features of a patent holders product.

In an era when United States patent laws have changed significantly, design patent protection has remained relatively unchanged. Design patents provide a term of protection that extends fourteen years from the date of issuance of the patent. One benefit of using design patent protection is that the average pendency (duration of the prosecution before the Patent and Trademark Office) of a design patent application is significantly shorter than the average pendency of a utility patent application.3 Therefore, design patents can provide a relatively quick and effective method of preventing a competitor from infiltrating a market by mimicking the aesthetics of a successful product. Total profits in the infringing article under 35 U.S.C. 289 are available in damages and preliminary injunction relief is also very readily available as compared with enforcement of a utility patent.

Recently many companies have recognized the value of design patents in various fields of invention. For example, in recent years design patents have been obtained for connectors for printed circuit boards (see, for example, D402,273 and D407,383), carrier elements for a semiconductor chip (see, for example, D405,779, D406,821, and D406,822), various parts for semiconductor manufacturing devices (see, for example, D401,250, D405,431, and D406,113), and computer displays and icons (see, for example, D406,123, and D407,698).

As is the case with utility patents, a design patent is only as valuable as the subject matter that it claims. The field of design patent includes a number of unique nuances that the applicant must be aware of in order to take full advantage of design patent protection. Therefore, it is essential to ensure that the design patent application is prepared using a carefully constructed strategy. An article published in the December 1999 edition of the JPTOS entitled "Intellectual Property Strategies for Protecting the Looks of A New Product" and authored by Karl G. Hanson (patent counsel for the 3M Company), describes various strategies for obtaining broad design patent protection. The following discussion is meant to set forth a general strategy for preparing and filing design patent applications. Obviously, individual inventions may present unique circumstances that require deviation from the strategy set forth below.

II. Identifying Embodiments For Filing

During the initial stages of preparing a design patent application, a detailed review of the product should be conducted, and a determination should be made regarding which features or combination of features are distinctive. In other words, what feature or combination of features distinguishes this invention aesthetically from other designs or what feature or combination of features will induce a consumer to purchase this product? Based upon the answers to these questions, a generic embodiment of each feature or combination of features should be developed. The generic embodiment should include only the most basic distinctive feature or combination of features. Then, a stylistic embodiment of each feature or combination of features should be created based upon the actual product intended for sale. At this point, it is useful to discuss how a competitor might alter the appearance of the product, and yet maintain the aesthetic appeal of the design. If necessary, embodiments of such alternative designs can be included in the design patent application.

Once the broad, generic embodiments and the stylistic embodiments have been identified, it may be desirable to perform either a formal or informal novelty search for the invention. A novelty search can provide the client with information regarding the likelihood of success of obtaining patent protection and the breadth of such protection, and can aid counsel in preparing the design patent application. As the cost of a formal novelty search and search report may be prohibitive, alternative low-cost search methods can utilized by the client, such as performing a free search of patents on various databases (for example, the databases available at the IBM Intellectual Property Network Website, or the United States Patent and Trademark Office Website).

III. Preparing A Design Patent Application

The most important aspect of a design patent application is the preparation of the drawings. Every line and every surface shading used in the initially filed drawings should be deliberate, with all extraneous and non-essential lines being removed or depicted only in phantom lines prior to filing of the design patent application. When preparing the drawings for the generic embodiments, only the feature or combination of features that are essential to the novelty of the embodiment should be depicted in solid lines. Obviously, various generic embodiments may be depicted as alternative embodiments in a separate set of drawings, which include either other novel features of the invention or novel combinations of various features of the invention. Phantom lines should be used for all non-essential features of any given embodiment, and should be kept to a minimum. Inherently narrow features, such as color, size, or texture, should only be included in the application if those features are novel and are intended to limit the scope of the application to include those features. For features that cannot be claimed generically (for example, the jack-o-lantern faces in the Sun Hill4 case discussed in the article by Karl Hanson), the application should be drafted to include a positive recitation of a generic description of those features in the specification.

The title and the description of the drawings of a design application should be drafted as generically as possible, and should generally focus on the feature being claimed and depicted in solid lines. A more detailed description of a particular embodiment can be given if necessary for the understanding of the claim, or to discuss alternative uses of the invention if appropriate caveats are included stating that the claimed subject matter depicted in the drawings is not limited by any description given of the embodiment.

IV. Filing A Design Patent Application

Once a decision has been reached as to which embodiments should be filed, a single design patent application should be prepared that includes both the generic embodiments and the stylistic or species embodiments of the invention. It has been the longstanding practice of the United States Patent and Trademark Office to limit design patent applications to a single claim. However, multiple embodiments of an invention are permissible for filing in a single patent application. Therefore, it is desirable to file all of the various embodiments of an invention in a single application, if possible, particularly if the embodiments share at least some common design features. Of course, the design application may be subject to a restriction requirement if the Examiner determines that more than one invention is present within the application.

One benefit of filing the various embodiments in a single design patent application is that only one initial application filing fee will be required. Ideally, all of the embodiments will be examined on their merits by the Examiner. Upon receipt of the first Official Action on the merits, the client will be in a good position to evaluate the patentability of each of the embodiments. At this point it is advisable to permit the broadest claimed embodiment to issue by canceling all other embodiments and to file separate divisional applications on any of the other embodiments that are determined by the Examiner to have allowable subject matter. Any rejected embodiment could be prosecuted in a separate divisional application. It is advisable to ensure that each design patent that issues only contains one embodiment, since the Federal Circuit has stated that a claim covering more than one embodiment may be rejected or found invalid if the prior art demonstrates the obviousness of any one of the embodiments. See In re Klein.5 Therefore, by splitting each embodiment into a separate patent, the client will ensure that the scope of the patents will not be limited by the inclusion of alternative embodiments that may be unnecessary for patentability purposes.

The filing strategy discussed above may result in double-patenting rejections. Under a statutory double-patenting rejection (or "same invention" type double patenting rejection) based on 35 U.S.C. §101, the rejection can generally be overcome either by identifying differences in the embodiments or abandoning the narrower embodiment. Under the judicially created obviousness-type double patent rejection, the rejection can generally be overcome by filing an appropriate terminal disclaimer.

V. Protecting Both Functional And Ornamental Aspects Of An Invention

In many circumstances it is advantageous to file for utility patent protection on the functional aspects of an invention, and design patent protection on the ornamental aspects of the invention. One strategy for proceeding in this situation is to file a utility patent application and, once the utility patent application is in condition for allowance, file a divisional design patent application based on the original utility patent application. Alternatively, if a rejection is received and it is apparent that none of the claims of the utility patent will likely be allowed, a design divisional application can be filed. In order to effectively follow this strategy the original utility patent application must be prepared and filed with drawings that are of design application quality, and a brief description of the ornamental aspects of the invention should be included in the specification.

In certain circumstances, the client may wish to file a divisional design patent application earlier than mentioned above, or may wish to file the design patent application simultaneously with the filing of the utility patent application. Such a situation may arise if the client is aware of a competitor producing a product that falls within the scope of the patent protection being sought by the design patent. In this situation, it may be advantageous to file the design patent application as soon as possible in hopes that a design patent will issue quickly, and can then be used to prevent the competitor from continuing to produce the product.

 


Endnotes


 

1. Mr. Hamilton is a partner of the electrical/mechanical department of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., and has extensive experience in design patent law. Mr. Ward is an associate of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., where he specializes in securing patent protection for mechanical and design- related technologies.

2. A recent Patent and Trademark Office, Technology Assessment and Forecast Program, General Statistics Report states that in calender year 1998, 243,062 utility patent applications were filed and 147,521 utility patents granted, while during the same year only 17,107 design patent applications were filed and 14,767 design patents granted.

3. A recent Patent and Trademark Office, The Technology Assessment and Forecast Program, General Statistics Report states that the average pendency for a utility patent application is approximately 24 months, while the average pendency for a design patent application is approximately 18 months.

4. Sun Hill Indus. v. Easter Unlimited, Inc., 48F.3d 1193, 1194-98, USPQ2d 1925, 1929.

5. 987 F.2d 1569, 1570, 26 USPQ2d 1133, 1134 (Fed. Cir. 1993).