Using Design Patents to Protect Consumer Products: Five Things to Know

WHAT YOU NEED TO KNOW

• Design patents protect a product’s unique visual appearance, not its function.
• Design patents can bolster a brand’s identity and prevent competitors from copying distinctive designs, such as the Coca-Cola bottle shape.
• Applicants must submit specific elements, like drawings, a description, and a claim.
• Design patents add value to a company’s IP portfolio, aid in market prioritization, open opportunities for licensing, and complement other types of IP protection.
• For global protection, companies can use the Hague System to file design patents in multiple countries.

Some of the world’s most iconic consumer products owe their success to their industrial design — how they look and feel. A uniquely attractive, well-designed product has a huge competitive advantage in the marketplace.

It’s why so many companies seek legal protection for their designs. In the United States, that protection comes in the form of a design patent. Patent holders can exclude anyone from making, using, selling, or importing their design for 15 years; this powerful tactic has been employed to protect designs ranging from IKEA furniture to the iPhone interface.

One: The Scope of Design Patent Protection

A design patent protects the new and original ornamental aspects that are embodied in or applied to an article of manufacture. A product’s appearance, basically.

This is different from a utility patent, which covers how a product works and is used. Utility patents also last 20 years, five years longer than design patents. The owners of utility patents must pay a maintenance fee every few years, however. Design patents don’t have that requirement.

No one can patent a general design concept on its own. Each design patent must be connected to a specific article, like a pair of shoes or an icon on a computer screen.

When someone applies for a design patent, they can seek only one claim per application. The same design applied to a phone and a laptop would require two applications. Meanwhile, the application for a utility patent can cover multiple claims.

Don’t underestimate the importance of a design patent. A product’s visual appeal and user experience set it apart and allow it to attract more consumers.

Two: The Strategic Value of Design Patents in the Marketplace

A design patent safeguards a company’s investment in design by letting it sue copycats. Without legal protection, companies could lose one of their most valuable assets. It’s why Apple and Samsung fought dozens of legal battles over smartphone and laptop design in multiple countries.

Need proof that design patents are worth real money? Frédéric Auguste Bartholdi, the creator of the Statue of Liberty, obtained a design patent that protected the sale of miniature versions of the statue. Those funds helped build the real thing in New York City.

Three: The Design Patent Application Process

To secure a design patent, inventors and companies must prepare a design patent application, which should include:

• Drawings
• A brief description of each of the drawings
• A single claim

The application then goes to the U.S. Patent and Trademark Office where an examiner will review the application to see if the design can be patented. Examiners look at existing patents and published material to confirm the design is new, and they ensure the application complies with the rules.

If an examiner allows an application to move forward, the applicant will receive information on what to do next. But the examiner could reject the design because it already exists in prior art, the application is incomplete, or the disclosure cannot be understood. In that case, the examiner will tell the applicant why the design isn’t patentable.

The applicant can respond to the objections, amend the application, and formally ask the examiner to reconsider the design. A second rejection is considered final, but applicants can take their objections to the Patent Trial and Appeal Board.

Anyone can seek a design patent on their own, but the process can get complicated quickly. It’s wise to work with skilled IP attorneys and other experts who can help demonstrate the design’s novelty and nonobviousness, two critical elements for winning approval.

Four: Design Patents’ Role in Business Strategy

Design patents can fuel a company’s growth. They’re often a key part of its IP portfolio. Those assets increase the company’s value in the eyes of investors and acquiring companies.

Design patents also help a company prioritize which markets it enters. It might focus on regions where it has protection (or better protection) first.

Having a registered design opens the door to licensing arrangements, a lucrative source of revenue. If a company doesn’t want to operate in a particular country, it could let a partner pay to use its design there.

A design patent is especially powerful when combined with other types of protection. Coca-Cola’s bottle? Its design patent expired years ago, but its appearance is still covered by “trade dress” under trademark law. It’s also possible for the same invention to receive a design patent for its appearance and a utility patent for its functionality.

Five: International Considerations for Design Patent Protection

Consumer products are a global business, so companies should register their designs in their home countries and key markets. This can be a big investment because international filings often take large amounts of time and money.

Fortunately, the Hague System simplifies the application process. It’s a program that lets companies register a design in up to 96 countries at once. The process requires a single application filed in one language — either English, French, or Spanish.

This is not a global patent, though. Individual countries can reject an application if it doesn’t meet their standards.

The Hague System isn’t the only way to register industrial designs in other countries. Inventors and companies can file directly through a country’s local registration process.

This is more time-consuming, but sometimes inventors can take advantage of the unique rules in each nation. For example, Japan lets patent owners keep their design registration a secret for as long as three years after it’s been approved.

The Grand Design

Industrial design creates real value for consumer product companies by strengthening their brand identity, distinguishing their products from competitors, and supporting business opportunities like licensing and international growth. Businesses should make sure their designs are protected under the law.

The rules on design patents can be very nuanced, though. And the process demands both time and money. Applicants should seek out expert assistance like the kind offered by AEON Law.

AEON Law’s attorneys have years of experience securing design patents, both domestically and internationally, with a global network of in-country partners. AEON can provide detailed insights into how design patents fit into a company’s overall IP strategy. Contact the firm today for a consultation.