September 7th, 2016

Five Reasons You Should Consider a Design Patent

A design patent protects the ornamental features of an item, but does not protect the utility of the item. So why is it so beneficial to get one? Here is a look at five of the top reasons to consider a design patent:

By Harry Du

1. Streamlined examination
One big headache with applying for a utility patent is that it takes way too long. From first filing, you will be considered extremely lucky if you get the patent in three years. For a design patent, however, normally the examination process can be finished in 12 months. The whole process is streamlined and the examiners for the most time only focus on formalities. Overall, you save time

2. Lower cost
Due to the simplicity of design patents, they are cheaper to get. Most of the drafting cost goes to draft persons trained for making patent drawings. The overall attorney fee is minimum compared with utility patents. In addition, streamlined examination results in less filing fee and less subsequent prosecution costs. As a whole, you save money.

3. Plenty of protection—in terms of time
A design patent lasts 14 years, compared to 20 years for a utility patent. However, keep in mind that design patents protect “ornamental design.” In the vast majority of cases, designs simply do not need long protections because they change with functionality as well as trend and fashion (think about the Nike shoe design patents). Fourteen years are, in most cases, more than enough protection.

4. Plenty of protection—compared to copyright
Copyrights also protect designs, but they do not protect designs associated with functionality. Design patents, on the other hand, specialize in this area. Moreover, as a registered design (which you paid for), design patents enjoy the “presumption of validity.” The burden is on the other party to rebut the design patent and sometimes that burden is very heavy.

5. Favorable legal standard
If you own a design patent you can go after not only those making exact copies of your design, but also the ones making close copies of it. The Federal Circuit Court decided that the legal standard for design patent infringement is the “ordinary observer” test, which asks whether an ordinary observer, such as a customer, will be deceived to believe one design is actually the other. Goddess, Inc. v. Swisa, Inc, 2008. This is somewhat similar to trademark’s “consumer confusion” test. There is no requirement that the ordinary observer looks at the patented design and the allegedly infringing design side by side. As long as he/she is likely to be confused about the two designs, the case of infringement can be made.


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