One of the most common pitfalls threatening individual inventors is a misunderstanding of so-called design patents. By statute, inventors of "any new, original and ornamental design for an article of manufacture may obtain a patent." Such patents are fairly common - nearly 560,000 had been issued at last check. So what is a design patent and how is it different from those "other" patents?
What most people think of as a patent is really a "utility patent," at least in the United States. As the name suggests, utility patents protect utilitarian features - the functional features of a product, how the product works or a manufacturing process, for example.
Design patents protect only the ornamental appearance of a product, not its function. In fact, it is often said design patents cannot, as a matter of law, protect any functional aspect of a product. A fancy new designer chair may include a new and original ornamental appearance. It may be eligible for design patent protection. But the function of the chair (to give its owner a place to sit!) has not changed in centuries and would not - and should not - be "patented."
It's possible for a product to be eligible for both design patent protection and utility patent protection. The design patent would protect the form of the product, while the utility patent would protect its function. The designer chair may have a unique reclining feature that can be protected by utility patent, while the chair's ornamental appearance is still new and original and eligible for design patent protection.
Unfortunately, many inventors historically have chosen to pursue a design patent rather than a utility patent, only to find out later that their patent does not provide them with the protection they thought they were getting. The inventor of that designer chair would be powerless to prevent a competitor from copying his reclining feature if all he received was a design patent.
The reasons for falling into this trap are many. First, the distinction between patent types can be subtle. Without experience or sophisticated guidance, it may be difficult for a new inventor to determine which type of protection is warranted. Even knowledgeable inventors sometimes are lured by a design patent's far lower average cost.
Design patents come with lower patent-office fees, lower attorney cost and no maintenance fees. Unscrupulous invention-promotion companies have taken advantage of this to mislead clients as to the "patent protection" they provide.
But there are many situations when design patent protection is warranted. Many products - furniture and other designer products for the home, for example - have a unique appearance that is itself something significant and valuable enough to protect. And if utility protection is not available for a product, design protection may be the only avenue left to an inventor.
This may be particularly valuable if a primary goal is to be able to advertise that a product is "patented," thereby conveying an implicit message to consumers that it must be something innovative and novel. Moreover, a design patent can be useful to prevent "dead ringers" (direct copies) from entering the market. Potential copycats may choose not to bother copying a product at all - even if its function is unprotected - if it means they would have to redesign the product's appearance.
For the sophisticated inventor or patent owner, design patent protection can be a viable option. In fact, the number of design patent filings has shot upward in the past 15 years. Corporations, rather than individuals, seem to be responsible for the increase. Corporate design-patent filings have roughly tripled since 1993, while individual design-patent filings have remained relatively constant.
Individual inventors may choose to follow these corporations' lead. But those who do without a proper understanding and assessment of design-patent protection do so at their own peril.
