Obtaining design patents on your company’s new, unique, and ornamental products can enable your company to prevent others from making, using and selling its protected designs. Product designs are valuable business assets, and when a unique appearance is key to a product’s success, a design product can be a worthwhile investment in order to protect that unique appearance. If your company is worried that a competitor will knock off the attractive new product you plan to introduce into the marketplace, your company should consider a design patent. If a competitor does knock off the product your company is in a better position to stop the infringement if it owns a design patent. This article will give you a brief overview of design patent law and provide a framework for enforcing a design patent against infringers.

I. What is a design patent?

Under 35 U.S.C. § 171, United States patent law allows inventors to obtain a patent on a new, original, and ornamental design for an article of manufacture. The design must be new in that no prior identical design exists. The design must be original and non-obvious such that a designer of ordinary skill in the art would not consider the design to be obvious in view of all preexisiting designs. Finally, the design must be ornamental or have one or more aesthetically distinctive features. Generally, an article is ornamental if the creation of the product requires artistic skill and artistic conception. Ornamental features protected by a design patent include the shape, proportion, surface ornamentation or a combination of each, embodied in or on an article of manufacture. Although a design of a functional article may be covered by a design patent, a design that is primarily functional cannot be protected by a design patent. In addition, methods and processes are not protected by design patents, but rather by utility patents.

Design patents have been obtained on products such as toys, shows, hats, light fixtures, jewelry, novelty items, automobile hood ornaments, computer monitors, plastic containers, wigs, and numerous other products. In addition, computer icons and type faced designs recently qualified for design patent protection. The term of a design patent is fourteen (14) years from the date of grant. A design patent gives the patent owner the right to prevent others from making, using, or selling the patented design.

II. Enforcing a Design Patent Against Infringers.

Assuming your company has just been issued a design patent from the United States Patent and Trademark Office for its attractive looking new product, it may now want to go after a competitor who is infringing its product design. The right to sue for design patent infringement does not commence until the patent issues. Once you have the patent in hand, to prove infringement of a design patent, the patent owner must establish two elements. The first element is that in the eye of the ordinary observer, giving such attention as a purchaser normally gives, the patented design and accused design are substantially the same, and the resemblance is such as to deceive the observer, inducing him or her to purchase one supposing it to be the other. The comparison is not made on a side by side basis, and the comparison must be made between the two articles, as they would appear in the normal course of use. The second element a plaintiff must prove is that the accused design appropriates the novelty of the patented design, distinguishing it from the prior art.

Plaintiffs often bring preliminary injunctions for design patent infringement to stop infringers from making, using and selling the infringing products. There is a presumption of validity of a design patent, and thus, it is often more difficult for a defendant to invalidate a design patent than it is for a plaintiff to prove infringement. Moreover, a judge can easily compare design patent drawings with an infringing product and reach a conclusive without expert technical evidence.

In addition to injunctive relief, a plaintiff patent owner can recover damages for design patent infringement. Damages recoverable from an infringer begin to accrue after an infringer has notice of the existence of a patent covering the infringers activities. Thus, it is important that the plaintiff patent owner market its patent with a design patent number issued by the United States Patent and Trademark Office to put potential infringers on notice. Under 35 U.S.C. § 289, an infringer of a patented design is liable to the patent owner to the extent of its total profit but not less than $250.00. In addition, 35 U.S.C. § 284 provides that the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty. The court may also increase the damages up to three times the amount found or assessed. Thus, an infringer can be liable to the design patent owner for the total profits for the sale of the infringing product. Actual damages, costs and/or attorneys fees. In addition, damages can be tripled if the infringement by the defendant is found to be willful or intentional.

Design patents are effective deterrents to potential infringers and provide patent owners with meaningful relief against actual infringers.

III. Conclusion

In the current marketplace, new products are knocked off as soon as they go out to market. A design therefore allows a company to obtain protection quickly for its product and enforces patent protection against an infringer as soon as the patent issues. Design patents are valuable protection for a company’s assets and they give a company extensive rights against competitors. They place a company in a strong position to prevent infrigers from knocking off its products and they enable a company to enforce its patents against infringers who do knock off its products.

If you or your company is interested in obtaining more information on design patents please contact Deborah A. Basile, a patent attorney who specializes in patents, trademarks, and copyrights in the Springfield, Massachusetts office of Doherty, Wallace, Pillsbury & Murphy, P.C.