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 you’re too late to patent your products?
If you are in that situation, perhaps not all hope is gone. Call Vic at (949) 223-9623 or email firstname.lastname@example.org 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.
If the feature you wish to protect is part of a useful article, then the feature must meet the following conditions to be copyrightable:
- be a 2-dimensional or 3-dimensional work of art that can be perceived as separate from the useful article; and
- 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.
If your features are borderline separable from the product, expect the US Copyright Office to reject your copyright application, but 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 highly 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.
Need IP for a product that is too late to patent?
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