WHAT IS A DESIGN PATENT ?

A design patent is a particular type of patent.

A design patent protects the ornamental appearance of an article of manufacture exactly as shown in the drawings. It does not protect any functional features of the article shown in the drawings and does not protect any features not shown.

For example, if the actual object produced or sold by the design patent owner has certain ornamental features on its back and these were not shown in the drawings of the patent, then those features can be copied by anyone else.

Design Patents

The patent laws provide for the granting of design patents to any person who has invented any new and non-obvious ornamental design for an article of manufacture. The design patent protects only the appearance of an article, but not its structural or functional features. The proceedings relating to granting of design patents are the same as those relating to other patents with a few differences. See current fee schedule for the filing fee for a design application. A design patent has a term of 14 years from grant, and no fees are necessary to maintain a design patent in force. If on examination it is determined that an applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. The drawing of the design patent conforms to the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope of patent protection. The specification of a design application is short and ordinarily follows a set form. Only one claim is permitted, following a set form that refers to the drawing(s).

WHAT IS A COMMUNITY DESIGN ?

The implementation of the European Directive offers a relatively simple and cost effective mechanism for designers worldwide to obtain protection for their designs in the European Union. Thus, instead of submitting a separate application in each of the 15 member countries, a designer can now submit a single application to obtain design protection throughout the Union. In the U.S., the requirement for protection under 35 U.S.C. § 171 is a new, original, and ornamental design for an article of manufacture.

The requirement for protection under Article 4 of the European Directive is a new design that has individual character. While the requirements for obtaining a design patent are similar, the mechanics by which such a patent right is obtained differ greatly between the United States and the European Union.

The U.S. provides a substantive examination of both novelty and nonobviousness, thereby treating the design patent application just as a utility patent application. The European Community Design is in effect a registration that does not undergo any substantive examination with respect to available prior art. In addition, the U.S. allows only one design to be claimed in each application, although a single design may include multiple embodiments illustrating an overall similar inventive concept. In contrast, a European Community Design application may include multiple designs.

Regarding scope, special situations can arise in which the U.S. and European design systems yield different protection. Accordingly, it is not always in the best interest of the designer merely to submit to the USPTO what was submitted in the European application and vice versa. One special situation is the treatment of component parts under European law and U.S. law.

In order to receive protection from a European Community Design, a component part must be visible to the end user during normal use of a complex product. U.S. law is broader in that visibility only at some point during the commercial life of the product is sufficient to qualify the part, i.e., the article of manufacture, for design protection.

The European Directive also provides an Unregistered Community Design right that is effective immediately following the creation of the design without subsequent action on the part of the designer.

The U.S. does not currently provide a similar right under the patent law system, but copyright protection may apply.

M. K. Silverman