Should you file a design patent application?
Without a doubt, design patents are cheaper and quicker to obtain than utility patents. The low cost and low probability of rejections certainly make design patents an appealing option for cash-strapped startups seeking some type of protection. If the appearance of your product or concept is arguably unique, then it would seem to wise file a design patent application. The question is not whether you should file because the answer in most cases is yes. The real issue is: Will a design patent protect your concept sufficiently?
Since I have covered the basics of what a design patent can do, let’s delve into what is not protected by a design patent.
What does a design patent not protect?
A design patent does not protect the function or any utilitarian features of an invention. A simple test to determine whether a feature is ornamental or functional would be to ask: Do I care about how the feature looks, or how it works? Sometimes, the answer can be both.
It’s OK for a product to have both ornamental and functional features. Just understand that a design patent provides no protection for the ornamental features. Even if the USPTO grants a design patent for a product that is primarily functional, that will not stop any future infringers from arguing that the functional features in your patented product are not protected by your design patent.
Features that already existed in the prior art would generally not be protected by a design patent. So any prior art patents or products could limit the scope of your design patent protection.
How can competitors avoid infringing your design patent?
It is generally easier to navigate around design patents than utility patents. A helpful metaphor is think of a patent as a roadblock that others are trying get past. If your roadblock is narrow, then it would be easier for others to navigate around your obstacle to reach their final destination (sales). If your roadblock is broad, it becomes more difficult to go around your barrier.
Utility patents typically provide you with a broader barrier. Design patents are narrower. To broaden your rights, you may need to think about filing both utility and design patent applications. If your concept lacks unique functional features, but comes in various designs, then consider whether it would make sense to file multiple design patent applications.
One way to avoid infringing a design patent would be to change the ornamental appearance of the product. There may also be other strategies to avoid design patent infringement that involve the prior art and functional features.
How can you get stronger design patents?
The US patent system has a unique option not offered in many foreign countries: broken lines. When used properly, broken lines in design patent drawings can broaden the scope of the design claim by not covering certain subject matter. It seems counterintuitive: you get more by claiming less. It takes some careful thought with your patent attorney to develop a smart strategy for using dashed lines.
Why not build a design patent portfolio?
With only one design patent, it may be relatively easy for competitors to come up with a different looking product to avoid infringement. With a portfolio of design patents, however, it can become much harder to design around your patent rights. If a competitor gets past one design patent, you will have additional backup weapons to use.
Another strategy would be to file design applications on each unique part of an overall assembly. By patenting each component as well as the entire system, you will have more ammunition to use against competitors that have copied only certain portions of the overall product.
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