June 5, 2016
Design patents have become a vital part of a well-rounded IP portfolio and, in certain industries, are essential to a company’s success. Historically, design patents have been overlooked on the assumption they have limited scope. Based on the renewed emphasis on the substantial remedies available for design patent infringement, this is a form of IP that should no longer be overlooked. Below are ten points for strengthening your design patents.
When in Doubt, Dash it Out
Design patent applicants can control the scope of their design patent applications. Remember, solid lines are claimed and dashed lines are disclaimed, meaning they will not be considered during the infringement analysis. Consider broadening your applications by dashing out non-essential elements of your design. Focus on the elements that a competitor would really need to use in order to evoke your creation and avoid including trademarks or minor, functional components in solid lines.
Consider the Disgorgement Remedy
When preparing your design patent figures (i.e. the design claim) keep in mind that design patent owners are entitled to the “total profits” from an infringing article, regardless of what portion of the infringing article was claimed in solid lines. A design claim to a small design element might yield the same award for infringement as a claim to the entire product (which may be a narrower patent).
File Continuation Applications
Design patents can have continuation applications, just like a utility patent. Design owners routinely seek to patent a single version of their design without seeking continuations. But keeping a “family” of design patents alive allows you to make minor changes to respond to a competitor’s attempt to “design-around” your original application. Because design patent applications are relatively inexpensive, a design continuation can be a good insurance policy.
Disclaiming dimensions is a great way to broaden the scope of your design patent application. If your design includes a length of a continuous shape or repeating surface ornamentation, consider disclaiming the dimensions by removing a slice along the length of the design. Disclaiming dimensions is an effective way to anticipate an easy design-around by a competitor.
Computer Generated Icons
Design patents now protect more than traditional, tangible objects – they apply to computer generated designs as well. For example, a new logo or trademark design could also be claimed as a computer generated icon in a design patent. Likewise, images of real-world products can even be claimed as a “portion of a display screen.” By claiming the virtual representations of your products in addition to real-world embodiments, you increase your options for confronting knock-offs that are offered for sale online.
Consider International Filing under the Hague Convention
Last year, the U.S. entered the Hague Convention for international design patent registration in. Under this new regime, U.S. applicants can seek international protection using a single application deposited with the U.S. Patent Office, which will perform a preliminary review of the application. This system allows for a more streamlined application process with more control and oversight in the hands of your U.S. counsel.
Claim Priority to Utility Patent Applications
If you filed a utility patent application, but forgot to seek a design patent application at the same time, it may not be too late! If your utility application includes sufficient figures showing the claimed design, you may be able to file a design patent application claiming priority to the utility patent application. However, keep in mind that design patents cannot claim priority to a provisional application.
Shading can be Shady
An easily overlooked aspect of a design patent application is shading. Make sure you work with an experienced draftsman who understands the implications of shading. For example, some shading indicates a particular surface texture. Other shading may indicate that a surface is transparent or translucent. Make sure you know how your shading impacts the scope of your claimed design.
Try to Only Use Line Drawings
Design patent applicants sometimes file applications using 3D CAD files or SolidWorks drawings. While there is no prohibition on this type of design patent application, the resulting design patent may have limited scope because all of the surfaces in the 3D CAD image may be treated like a claimed surface. The better approach is to use standard line drawings whenever time and the budget will permit.
Animate your Figures
Modern products commonly move or take on a new shape during the normal use of the product (e.g. a transformer action figure or sports equipment). Design applicants should seek to submit design figures showing the claimed design in a variety of positions and shapes in order to claim the full appearance of the article during normal use. The appearance of the claimed design during normal use should be fully reflected in a design patent application.
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