1. DESIGN PATENTS
FROM A PATENT ILLUSTRATOR’S POINT OFVIEW
“AN INVENTOR’S SECRET DEFENSE”
BY,ADAM HOLDEN ROSENBERG
ACME PATENT DRAWINGS
ADAM@ACMEPD.COM
2. DESIGN PATENTSVS UTILITY PATENTS
• In general terms, a "utility patent" protects the way an invention is used and works
while a "design patent" protects the way an invention looks .The ornamental
appearance for an invention includes its shape/configuration or surface ornamentation
applied to the invention, or both.
3. THEVALUE OF A DESIGN PATENT
• Many products derive significant value from their visual appearance that can be protected via a design
patent without the need for a utility patent.
• My favorite examples
• Listerine Bottle
• Apple ‘Wedge’ shape for laptop & iPhone that protects the rounded corners and rectangular front face
• On May 24, 2018, a jury awarded Apple $533.3 million for Samsung’s violation of three of Apple’s design patents.
• Design patents are typically less expensive and faster to secure than a utility patent.
• The patent term is limited to 15 years from the date of issuance (compared to 20 years from the filing
date for a utility patent.)
• Protection offered is limited to the appearance of an invention.
• Design patents can prevent competitors from creating anything that is “substantially similar” to the
patented design.
4. HOW TO SECURE A DESIGN PATENT
You’ve finished designing the appearance of your invention, not functionality.
• FORM OVER FUNTION
• 3D Solid CAD Model
• Can be created by a service provider, yourself, or industrial designer
• Drawings
• Export the views from the CAD model as it is necessary to include many views of your
invention to ensure all features reconcile across all views with 100% accuracy
5. STRATEGIES FOR CREATIVE PRODUCTS AND DESIGNS
• The key to utilizing design
patents resides in the lines used
to depict an object within the
drawings.There are three types
of lines that may be utilized:
• Solid lines claimed
• Dashed lines disclaimed
• Dot Dash lines indicate boundary
of claimed area
6. EXAMPLE OF HOW TO BROADENYOUR CLAIM
A common strategy is to claim the bare minimum of an object that is necessary so that the design
patent may be as broad as possible.
Example: an inventor wants to claim a unique ornamental design of a water bottle and is aware of the
general structure of different types of water bottles that already exist. Below are published examples
of cases utilizing dashed lines to claim portions of the design which are already in the zeitgeist.
Double click the image!
7. TURNTO DESIGN PATENTSTO FIGHT OVERSEAS
KNOCKOFFS
It’s relatively new for inventors to use design patents, which protect how a product looks, to combat the threat of knockoffs to
their brands. Once design patent protection is secured, many options become available to address copycats.
For example, for products sold on Amazon.com,Amazon has enabled IP rights owners to report infringement directly on the
platform.Amazon then reviews the infringement allegation and determine whether to remove the copycat’s product.
A design patent holder can initiate a US InternationalTrade Commission (ITC) investigation, in which the remedy is an exclusion
order preventing importation into and sale in the United States of infringing products.
ITC investigations conclude rather quickly, usually in 16 months and an exclusion order is a powerful remedy, effective even against
copycats who are named in an investigation and then default (and sometimes even against copycats who are not named in an
investigation at all), enforced by US Customs and Border Patrol (CBP) by seizing infringing goods at the US border.
Another remedy available to design patent holders is damages, which are available by suing the copycat in US district court.
Do not manufacture outside of your home country, or be prepared to be knocked off.
File in many countries at the same time!
