IP protection for product
designs is typically found in a combination of one or more of the following
Contracts, which are
typically used with employees and third parties to prevent loss of novelty, as
well as to provide notice of ownership. Contractual protections such as
Non-Disclosure Agreements are well-known and heavily used.
- Utility patents, which cover
the novel and non-obvious functional elements of a conception. This is likely
the patent you are most familiar with, including an exhaustive written
narrative accompanied by drawings and a series of written claims defining the
scope of protection.
Design patents, which cover novel and
non-obvious non-functional or ornamental features of a conception. Design
patents are receiving much publicity at present as a result of the recent, and ongoing, Apple v. Samsung case.
Copyright protection, for
original works of authorship. In general, copyright law does not grant
protection to utilitarian objects. Section 101 of the Copyright Act provides
that the design of a useful article will be protected "only if, and only
to the extent that, such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article". . . including
"two-dimensional and three-dimensional works of fine, graphic, and applied
art, photographs, prints and art reproductions, maps, globes, charts, diagrams,
models, and technical drawings, including architectural plans."
- Trade secret protection, for
those conceptions, or parts of the conception, that cannot be ascertained or
reverse-engineered by the general public. Typically, trade secret protections
are most appropriate for methods of manufacture or software, where the
operational details are hidden.
- Trade dress protections, for
non-functional features that have acquired distinctiveness through extensive
marketing, and commercial use and acceptance.
We strongly advocate leveraging two of these
protective mechanisms to achieve IP protection of novel, non-obvious and
non-functional features of designs: Design Patent protection followed by Trade
Dress protection. (Of course, contracts will also be employed, functional
features will be covered by utility patents and, where appropriate, copyright
protection will be utilized to provide the fullest and broadest IP coverage
possible.) The resulting coverage scheme allows non-functional feature IP
protection to begin virtually immediately after conception, with continued and
unbroken protection theoretically forever, until the underlying product is no
longer "in commerce." In short, it can be a beautifully elegant
result when properly executed.
Design Patents Coverage and Purpose
Design patents are provided to
promote progress in the decorative arts and to reward inventors. Thus, design
patents protect features that are primarily non-functional, ornamental elements
of an article of manufacture, such as a specific product shape or a particular
surface ornamentation. Note that color cannot be protected with a design
For example, an oval-shaped
element on the handle of a surgical instrument may be protected under a design
patent if the oval shaping is primarily non-functional and is also both novel
and non-obvious in view of the prior art. User interfaces on electronic devices
are also heavily protected by design patents, e.g., Google's home page or the
tiling arrangement on Apple's iPhone.
Design patents require no use
of the underlying product in commerce in order to meet the protection
threshold, just novelty and non-obviousness, both of which are determined
according to the now well-known "Ordinary Observer" test.
Speaking generally, design
patents are relatively inexpensive to prepare, file and bring to issuance, as
compared with utility patents. Design patents regularly issue within six to
eight months of filing, usually without any pushback from the USPTO. With a
little advanced planning and placement, a design patent application may be
accelerated on the so-called "Rocket Docket" within the USPTO,
resulting in likely issuance of the design patent application within three to
six months of filing, barring any significant issues during prosecution.
Design patents are granted for
a period of 14 years. During this 14-year term, the owner of the design patent
enjoys a full monopoly of the patented elements, including the exclusive right
to make, use, sell and/or offer for sale the patented device, and may stop
infringers on any of those rights.
Trade Dress Coverage and
Trade dress is provided to
enable a business to identify itself efficiently as the source of a given
product through the adoption of a mark, which may be in the form of a slogan,
symbol, ornamental design or other visual insignia. Through trade dress
protection, the owner may obtain injunctions against others selling confusingly
Trade dress, like design
patents, protects only non-functional product features, but covers more
features than design patents: size, shape, color, color combinations, texture,
graphics and even particular sales techniques may be subjects of trade dress
protection. A surgeon may, for example, come to recognize a device that has a
feature with a distinctive pink color and identify that device with the
manufacturer of the device as a result.
Unlike design patents,
trade dress protection does not depend on the state of the prior art, in other
words, novelty and non-obviousness are not requirements to obtain trade dress
protection. What is required is "acquired distinctiveness" in the
marketplace, otherwise known as "secondary meaning." Generally, this
means that the product or design has, through extensive use in commerce, has
become associated in consumers' minds with the source of the product or design.
Acquired distinctiveness is
typically proven either by certifying that the product has been used
continuously in commerce for five years, or by actual evidence of secondary
meaning. In some cases, the USPTO may determine that continuous use of the
product over five years is not sufficient to establish a prima facie case of
acquired distinctiveness. In these cases, supplemental evidence in support of
secondary meaning or acquired distinctiveness is required to achieve
registration on the Principal Register.
In certain cases where
evidence of acquired distinctiveness is not sufficient, registration on the
Supplemental Register may be required. While not as valuable as a Principal
Registration, the Supplemental Registration still affords significant benefits:
the registrant may use the registration symbol ®; the registration is protected
against registration of confusingly similar marks; and the registrant may bring
suit for infringement in federal court (albeit with some evidentiary issues
regarding acquired distinctiveness that must be proved).
Combining Design Patent and Trade Dress
It is a fact that a design
patent expires after 14 years. However, during this 14 years, the owner enjoys
a full monopoly for the protected design: a significant benefit. But in the
patent world, all good things come to an end: expiration of the design patent's
term allows the protected design to become part of the public domain, available
for all to make, use or sell without restriction, unless additional protective
steps are taken.
This is where trade dress
protection demonstrates its value in a non-functional IP protective scheme:
trade dress protection, once acquired distinctiveness is achieved, is
theoretically endless as long as the protected design or product remains in
It is possible to protect
the IP of a particular product continuously throughout its entire lifecycle.
The protection begins with the filing of the design patent at a point before
marketing and commercialization, through issuance of the design patent and
continuing with trade dress protection well beyond the expiration of the design
patent, to the point at which the product is no longer in commerce, no matter
how many years that product is in commerce.
Stepwise, the process looks
product will be covered under a design patent for 14 years;
this 14-year monopoly period, the owner of the patent may begin marketing
the product covered by the design patent;
some point, before the expiration of the 14-year design patent term,
aspects of the marketed product begin to meet the threshold of
"acquired distinctiveness" in the marketplace, allowing
registration of the product's trade dress on the Principal Register.
trade dress registration is achieved, the subject product enjoys the
benefits of trade dress protection theoretically forever, or until the
product is no longer in commerce.
Viewed this way, filing a design patent "buys time," 14 years to be
exact, for the owner of the product to develop the acquired distinctiveness
that is required for trade dress protection.
During the pendency of the
design patent's 14-year term, the forward-looking owner of the patent and
marketer of the product will strategically and ruthlessly implement advertising
and marketing literature comprising language positioning the product's
non-functional features as distinctive. In addition, consumer surveys will be
taken at regular intervals to gauge distinctiveness as well as capturing
consumer testimonies relating to distinctiveness. Implementation of these strategic
steps result in evidence tailored for use in establishing distinctiveness
within the USPTO. This, and other strategic steps, help significantly increase
the likelihood of success during the Trade Dress registration process.
For more information,
please contact your Intellectual Property attorney at Winthrop