Protecting Designs: The Good, the Bad, and the Expensive
Design patents protect virtually any new and nonobvious ornamentation of a useful object, from the flickering icon on your computer screen to the shape of the iPhone4 (left). In this website we'll walk you through the basics needed for design patent protection and we'll discuss how to file your own design patent application so that you can get started.
Should I Seek a Copyright or Design Patent?
The rights you get with a design patent are considered to be broader or more powerful than a copyright. That's because you don't need to prove that an infringer saw your work and copied it -- all that matters is the that two works are the same. But that advantage may prove more valuable for those designers who can afford to obtain the design patent (as well as to enforce it). The design patent application and filing process can take a year or more and cost one to two thousand dollars. A copyright is automatic -- it exists once you create the work -- and registration, which provides benefits if you need to chase someone, typically takes three to six months and costs approximately $50 to $65. Copyright will last for your life plus 70 years; a design patent lasts for 14 years. In addition, there are many rules for design patents that could disqualify it as an option for you. For example, if your design has been offered for sale or images of it have been published more than a year ago (referred to as the one-year rule), you cannot now file for a design patent. (Note these rules will change on March 16, 2013, when the U.S. moves to a first to file system.) Finally, not all art can be protected under copyright and not all designs are protected under design patent law. Copyright law does not protect functional designs; and the USPTO will not issue design patents for 'surface ornamentation' (that is, two-dimensional illustrations such as drawings). So, if you're only decorating the surface of an object, you may not qualify.
Who’s Got the Biggest Portfolios?
Historically, companies with the largest design patent portfolios have products that are functionally indistinguishable from competitors—for example, Reebok and Nike (shoes), Goodyear, Michelin, and Bridgestone (tires), Casio, Sony, Sharp, Seiko, Hitachi, and Toshiba (consumer electronics), Motorola, AT&T, and Nokia (telephones), Kohler and American Standard (plumbing supplies), Colgate-Palmolive and Proctor & Gamble (health and cleaning supplies). Other companies with large portfolios include Rubbermaid, Timex, Black & Decker, and Gillette.
A Little History
Practical items haven’t always had such fanciful appearances. Prior to the industrial revolution if you wanted a knife, bowl, saddle, or other useful object, you purchased it from a craftsperson who dutifully merged form and function. Distinguishing the appearance of useful objects became more important in the 20th century, when competing manufacturers realized that that if two products did the same thing and had the same specs, the ultimate buying decision often came down to appearance. As the appearance of industrial products grew in importance so did the need for a system of legal protection for product designs and ornamentation. The first design patent laws in this country, enacted in 1842, were limited to designs for products such as jewelry and furniture. A century later, design patent laws had expanded to protect any novel, nonobvious design or ornamentation for a useful object—for example, the unique appearance of a watch face, running shoe, or credit card.
Who’s Examining your Design?
In an article about design patents a few years ago, a former USPTO official detailed the academic degrees of the design examiners. There were nine architects, six examiners with degrees in fine arts, three with interior design degrees, four with industrial design degrees, four with degrees in clothing and textile design, two with degrees in journalism, and one with a degree in sociology.
Design Art: Infusing Our Lives and Homes
“In our century, art is no longer created by the few or for the few. Rather, art has become integrated into our society's products, and art infuses our homes and lives with qualities once reserved for museums.” Cooper C. Woodring, A Designer's View On The Scope Of Intellectual Property Protection, 24 AIPLA Q. J. 309(1996).