Consumer products and IP (Part 6): deriving a copyright for consumer products
Consumer Law

Consumer products and IP (Part 3): the intersection between consumer products and design patents

Consumer products and IP (Part 3): the intersection between consumer products and design patents

Although utility patents are far-and-away the most common type of patents, design patents present additional options for protecting consumer products. These patents stop competitors from copying a product’s unique and inventive look and/or design. Recent decisions have granted significant infringement damages to patent owners—with one such case resulting in a $339 million verdict. (See Samsung Electronics v. Apple).

What are design patents?

In short, design patents claim part or all of a product’s ornamental look. This includes an article’s shape, configuration, or surface. Examples of consumer-product-related design patents include:

Some well-known and fun examples also include:

However, in the United States, the patents cannot claim designs that are “primarily functional.” (See Automotive Body Parts v. Ford Global Technologies).

Design patents and utility patents: what’s the difference?

In the US, the rights and damages available to design patent owners are similar to those afforded for utility patents. The same litigation opportunities are also available. However, some key differences exist:

  • Design patent applications rely almost exclusively on comparing figures with publicly available designs rather than technical prior art. As a result, the timeline for obtaining a design patent is typically shorter and less expensive.
  • Second, the protection provided by design patents is narrowly defined by the submitted figures. Even small variations can allow competitors to escape infringement.
  • Third, a design patent expires 15 years from the date of grant.

For both utility and design patents, when to file introduces an additional strategic battle. In most countries, an inventor must file an application before the claimed invention is first disclosed to the public, with some exceptions. Generally, the time to file a patent application starts ticking when a company, for example, sells, publicly presents on (including attempts for funding), or publishes works discussing a product.

It is highly recommended to seek counseling prior to disclosing, in any capacity, an invention a company may later want to patent.

Design patents versus trademarks: what’s the difference?

Design patents and trademarks can overlap. However, design patents protect a unique ornamental design for a set number of years while trademarks protect a consumer’s association of a product with a source. For example, a company could file a design patent for a perfume bottle’s unique design features. But, the company will not obtain a trademark unless that particular design causes a consumer to associate the design with a specific company.

A key difference is public disclosure. For design patents, publicly disclosing the design triggers the filing deadline and may prevent a company from receiving a patent. But, public disclosure strengthens a company’s trademark because the public would begin to associate the design with the company.

Another key difference is infringement. To infringe a design patent, a competitor must make, use, sell, offer to sell, or import a product having the claimed design. To infringe a trademark, a competitor must use a similar enough mark to confuse consumers as to the product’s source.

Robust design patent and trademark portfolios complement each other as long as a company thoughtfully manages both.

How design patents support consumer products

Design patents provide companies a typically more affordable means to protect its products. And, given the importance of a product’s look, companies can strategically position themselves ahead of their competitors.

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