How to Get IP When It’s Too Late to Patent

Is it too late for you to file a patent?

Did you miss a patent filing deadline? Or, did you not even know that patents had to be filed by a certain time after you begin selling your product? When potential clients call me after they’ve been selling their innovative products for awhile, I usually ask them why they didn’t file a patent. Answers vary. With all the noise on the web about patents being ineffective, I typically follow up by asking about their backup plan to stop copycats without patents. Invariably, I get no good answers. There was no backup plan.

Is there still a way to get IP if it is too late to patent your products?

Need IP when it is too late to file patents? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email to explore options to protect your innovation and stop competitors from copying your products.

Functional Features vs. Ornamental Features: What can you still protect?

At the outset, recognize that we are talking about protecting only ornamental, nonfunctional features. Let’s be crystal clear. It’s not the function, but the looks of your product that might be protectable if it’s too late to file a patent. These are the visual features that would have been appropriate for design patent protection.

Notice I said ornamental features, not ornamental products. A functional product can still have protectable ornamental features. It’s the visual feature we’re trying to protect, not necessarily the overall product.

Copyrights to the Rescue: A Second Chance to Obtain IP When It’s Too Late to Patent

It would help to be cautiously optimistic in these late situations. Not every visual feature will be copyrightable. Ornamental features must meet a 2-part separability test in order to obtain copyright protection according to the US Supreme Court case of Star Athletica v. Varsity Brands.

When it comes to registering copyrights, there are good news and bad news. The good news is that prior public disclosures do not prevent you from copyrighting your designs. The bad news is that it may quite challenging to obtain a copyright registration on your product.

What are copyright registration requirements for a product design?

At the outset, you must determine if the product or feature you wish to copyright is a useful article. If it is a useful article, then the feature must meet the following conditions to be copyrightable:

  1. be a 2-dimensional or 3-dimensional work that can be perceived as separate from the useful article; and
  2. qualify as a protectable, graphic, or sculptural work, either on its own or fixed in some other tangible medium, if it were imagined separately from the useful article.

For example, the 2-dimensional work at issue in the above copyright case consisted of surface decorations on cheerleading uniforms. The Supreme Court held that such features met the first requirement of being a work of art that can be perceived as separate from uniforms. The artwork also met the second condition since you could imagine removing the decorations and applying them to another medium.

When the features of your design consist of the three-dimensional shape of your product, expect a higher risk that the US Copyright Office will reject your copyright application. You would have an opportunity to argue that your work meets the separability test.

Can you trademark a product shape or feature?

Though it is possible to register a product shape as a trademark, it is very difficult to do so. Product shape trademarks, therefore, are very rare. In most cases, you should not count on trademarking your product shape as a fallback option for failing to obtain patents.

File a patent on a modified version of your product less than one year old?

Another option is to file a patent application on a modified version of your product that has not been publicly disclosed for more than one year. There are still drawbacks to this approach since you will need to disclose the older products as prior art. It is not an ideal solution, but you might have not the luxury of ideal options.

Need IP for a product that is too late to patent?

Instead of doing nothing, call patent and trademark attorney Vic Lin at (949) 223-9623 or email to explore how we might be able to get you IP rights and stop knockoff products.

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