Comparison to Other Forms of Intellectual Property

Design Patents and Utility Patents

Design patents are different from utility patents in several ways. A design patent is strictly about appearances—that is, it’s granted for the ornamental or aesthetic elements of a device; a utility patent is about usefulness—that is, it’s granted because of what the invention accomplishes.The application process for design patents is much easier than for utility patents. A design patent lasts only 14 years from the date it’s issued (15 years for design patent applications filed on or after May 13, 2015); a utility patent is valid for 20 years from the date of filing. Finally, it’s easier to understand what’s protected by a design patent because everything that the inventor/artist claims as a right to the design is shown in the drawings. In a utility patent, the protectible elements are described in the claims, which can be difficult to decipher and comprehend. 

Design Patents and Copyright

The rights granted for a design patent and copyright can overlap. Both forms of law protect artistic design and visual imagery. For example, a three-dimensional cartoon character on a belt buckle could qualify for copyright protection as a work of the visual arts. The same belt buckle also could qualify for a design patent because it is a new, original and ornamental design for an article of manufacture (i.e. a belt buckle.) Not all designs are protected under copyright and design patent law. The Patent and Trademark Office will not issue design patents for surface ornamentation (i.e. flat illustrations such as labels or drawings). Therefore, writings and two dimensional illustrations only are protected under copyright law. Copyright and design patents differ substantially as to the extent of rights and the registration process. In choosing the appropriate form of protection an attorney and client usually weigh several factors. The total cost (including attorney's fees) of acquiring copyright protection is inexpensive (i.e., usually under $200) and a registration issued within six months. The cost of acquiring a patent is several thousand dollars and the registration process takes approximately 18 months.

The protection for design patents is broader (i.e., it is not necessary to prove copying) but a design patent only lasts 14 years (15 years for design patent applications filed on or after May 13, 2015) . Copyright protection lasts for either life of the author plus seventy years or 95-120 years for a work made for hire. Design patents are best suited for shapes and appearance of functional objects, particularly when such shape may not qualify for copyright protection (i.e., shape of office equipment, kitchenware, appliances, jewelry, furniture, musical instruments, or motor vehicle). Copyright protection is best suited for flat art on functional objects (e.g., a map imprinted on fabric) or three-dimensional art that separable from the function (e.g., licensed character on belt buckle, ornate sculpture on lamp base.)

Design Patents and Trademarks

Mogen David

The image and overall appearance of a product can be protected under principles of trademark law known as trade dress. For example, the unique shape of the Mogen David wine bottle serves to identify the alcoholic beverages produced by that company. When it was proven that a competitor's similarly shaped bottle was likely to cause consumer confusion, the Mogen David company was able to stop the competitor. The Mogen David bottle design is also protectible as a design patent because it is a new, original and ornamental design for an article of manufacture. 

Can the owners of the Mogen David bottle design enforce both design patent and trade dress rights? Yes. A federal court has held that the expiration of the Mogen David design patent did not prevent the company from enforcing trade dress rights. In other words, the expiration of patent rights did not affect trademark rights.



© 2012 Rich Stim