In that vein, I recently came across a set of informational videos available at the World Intellectual Property Organization (WIPO) website here.  These Flash videos are geared towards small and medium-sized entities (SMEs) and address all the different types of intellectual property and their importance to the success of a business.

They have some really great practical information that just about any business owner or manager would benefit from reviewing.  My only complaint is that they seem to run somewhat slowly at times, perhaps due to the Flash implementation.

Take a look and let me know what you think about the videos in the comments.

The Copyright/Design Patent Subject Matter Distinction

Copyrights protect nonfunctional objects.  The copyrighted subject matter must have no substantial practical utility or must be separable from a useful substrate.  Most copyrighted works are pure artwork, such as statues, photographs, drawings, etc., and have no substantial practical utility.

Some copyrighted works may be  fixed to a useful substrate, but this fixation is arbitrary and serves no functional purpose.  For example, a picture on a coffee mug , a mural on a wall, or a sculpture serving as the base of a lamp.  These works are part of a useful object, but are separable therefrom.  The creative aspect of the work that is entitled to copyright protection is simply adhered or added to the functional object.

On the other hand, design patents cover the ornamental appearance of functional objects.  The shape or surface ornamentation of a shoe, car part, or a cabinet, for example, can be protected by a design patent if not dictated primarily by functional considerations.

So, the scope of subject matter protected by copyrights and design patents differ.  Nevertheless, there is some overlap, as for some objects both copyright and design patent protection can be obtained.  For example, a lamp with a sculpture for a base could be protected by copyright, for the sculpture, and by a design patent, for the ornamental design of the lamp, which is a functional object.

Similarly, the surface ornamentation of an object may be separable from the object, and therefore copyrightable, yet still be the ornamental appearance of a functional object and therefore entitled to design patent protection.

Design Patents and Copyrights Have Different Infringement Tests

Copyrights protect an item from being copied.  Generally, copying is presumed if an allegedly infringing article is 1) substantially similar to the copyrighted work and 2) the creator of the article had access to the copyrighted item.  However, there is no copyright infringement if there was no copying.  Even if the allegedly infringing work is apparently identical to the copyrighted work, if it was arrived at independently it does not constitute infringement.

Design patents, in contrast, protect against anyone else using the same design, regardless of whether they came up with the design entirely independently or not.  The test of infringement for a design patent is whether an ordinary observer (such as a customer) would find the patented design and the allegedly infringing design substantially similar.

Design Patents and Copyrights Provide Different Terms and Types of Protection

Copyright protection last for the lifetime of the author plus 70 years. Copyrights give the copyright holder the exclusive right to produce copies of the work and to distribute and sell those copies, to import or export such copies, to create derivative works such as adaptations, to perform or display the copyrighted work publicly, and to broadcast the work, if applicable.

A U.S. design patent provides protection for 14 years from the time it issues and gives the owner the right to exclude others from making, using, copying, or imported the patented design in the United States.

Design Patents and Copyrights Substantially Differ in Their Costs and Procedures

Registering your copyright carries a government fee of $35 and involves filling out what is usually a fairly simple form available on the copyright.gov website.  It is very possible for an individual to submit an application for copyright application without the help of attorney, although I do recommend  using an attorney, particularly if you have never done it before.

The Examination is generally straightforward and in most cases will result in a registration within a matter of months with no further communication with the Copyright Office necessary.

Filing a design patent requires preparing and filing a design patent application, which is a more complex task.  The government fees are $230 ($460 for a large entity) for the application, plus a $430 issue fee ($860 for large entities).  Many times the Examiner will initially object to the drawings or some formal aspect of the application and a further response will be necessary.  The help of an attorney is highly recommended.  Usually a design patent will issue within a year or two.

Did I leave anything out?   Have any questions about the distinction between design patents and copyrights?  Let me know in the comments.

Design Patents Protect Appearance – Utility Patents Protect Functionality

Design patents differ from utility patents (what we usually think of, when we think of patents), in several important ways.  The main difference is that utility patents protect the functionality of a useful invention, whereas design patents protect only the appearance of an object.

This is a critical distinction to understand if someone is telling you that you should apply for a design patent.  A design patent only protects against another object that is substantially similar in appearance.  If the appearance of a competitor’s product is different than your patented design, for example due to a change in the shape of the external housing, your design patent affords you absolutely no protection or recourse against this competing product.

Even if the competing product has all the same parts as your patented design and does exactly the same thing, your design patent gives you absolutely no protection if the appearance of the two products is not substantially similar.

If your invention is an improvement because of what it does, and not just because it looks good, you do not want a design patent- you need a utility patent.

In fact, a design that is dictated primarily by its function cannot be protected by a design patent.  This applies, for example, to ergonomic designs for computer mice or other tools, gear designs, and aerodynamic vehicle parts.  Because their design is dictated by functional, and not merely ornamental, considerations, any design patents ostensibly covering such designs are invalid.

Rules Governing Design and Utility Patents

Design and utility patents are governed by the same rules, except as modified for design patents by MPEP § 1500.  Some of these changes include the length of protection- 14 years from grant for design patents as opposed to 20 years from filing for utility patents- and timing and priority considerations.

Design Patents Cannot Protect Hidden Features

A design for an article that is hidden cannot be protected by a design patent.  Only the outward appearance that is visible and of commercial concern can be covered by a design patent.

An Invention Can Be Protected By Both Utility and Design Patents

An invention may include both ornamental and functional features.  The functional features can be protected by a utility patent and the ornamental features, not dictated primarily by functional considerations, can be protected separately by a design patent.

I will continue my explanation of design patents in future posts.  If you have any questions about the different roles of design and utility patents, please let me know in the comments.

Design Patents Protect the Ornamental Design of Functional Objects

For example, a design patent was granted for the appearance of the original coke bottle.  A coke bottle is a functional object, as opposed to nonfunctional artwork- it contains a beverage and is gripped and manipulated by a user to deliver the beverage.  It has some utility over and above the fact that it is (arguably) pretty to look at.

However, the particular shape of the bottle is not functional- the particular curved, striated shape of the bottle does not make it easier to hold or add any functional value to the bottle.  Therefore, the design can be protected by a design patent.

Design Patents Do Not Protect Functional Designs or Nonfunctional Objects

In contrast, a sculpture could not be protected by a design patent.  A sculpture is not functional and has no usefulness outside of its appearance.

Similarly, the design of a new car part that cuts down on wind resistance and improves gas mileage, or the design of a new ergonomic keyboard that reduces discomfort and carpal tunnel syndrome, could not be protected by design patents because their appearance is dictated primarily by functional considerations.

The car part has its appearance primarily due to the functional advantages of that shape, and not due to purely ornamental/aesthetic considerations.  The proper way to protect such functional designs is with a utility patent.

The Scope of Protection Offered by Design Patents

Design patents allow the owner to exclude others from making, using, copying, or importing any object with a design substantially similar to the patented design in the United States.  Design patent protection lasts for 14 years from the initial grant by the United States Patent and Trademark Office and no maintenance fees are required during this period.

What Are Examples of Designs That Design Patents Can Protect?

Ornamental designs of jewelry (jewelry is functional, as it is worn), furniture, beverage containers, CPU cases, and computer monitors have been protected by design patents.

Design patents can also protect fonts and computer icons displayed on a computer screen.  In fact, the first design patent was granted for a new font.

What is a Design Patent?

The appearance (“ornamental design”) of useful articles (like cabinets, cars, shoes, etc.) that are not purely creative works but have some function cannot be protected by copyright.  Instead, they are protected by design patents.  Design patents give you the right to exclude others from making, using, copying, or importing objects with designs substantially similar to yours in the United States for a period of 14 years from the date of issue.

Differences Between Design Patents and Utility Patents

Design patents are controlled by the same rules as those for utility patents, with a few exceptions (detailed in MPEP § 1500).  One of the ways design patents differ from the much more common utility patents is in matters of timing.  Other than the aforementioned 14 year term, design patents also differ with regard to foreign priority claims and rejections for lack of novelty under § 102(d).

Foreign Priority of Design Patents

As stated in statute 35 U.S.C. § 172, “The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs.” Section 119 states that a U.S. application previously filed in a foreign country is entitled to the filing date of the foreign application if the requirements therefor are met, and if filed within 12 months of the filing date of the original foreign application.

Therefore, as explained in MPEP § 1504.10, a U.S. design application must be filed within 6 months, not 12 months as for a utility application, in order to get the benefit of the early filing date of the foreign application. If a foreign design registration was filed April 12, 2009, a U.S. design patent application claiming the benefit of that application filed by October 12, 2009 will be treated by the Patent Office as if it was filed on the April 12, 2009 filing date of the foreign application. If that same U.S. design application is filed October 13, 2009, it will not get the benefit of the earlier filing date.

Design Patents and Novelty Rejections Under § 102(d)

35 U.S.C. § 102(d) sets forth a basis for rejection of an application due to the earlier filing of the same application in another country. For a utility application, if the foreign filed application issues as a patent before the U.S. application is filed and the foreign application was filed more than 12 months before, no U.S. patent can be granted.

In the case of design patents, as dictated by 35 U.S.C. § 172, this time period is only 6 months.  This is particularly important because in many European countries, design registrations are granted immediately.  Therefore, if the foreign application is filed first, it will always issue before the U.S. application is filed.  In that case, any U.S. design application, whether claiming priority to the foreign application or not, is completely barred after only 6 months.

Design Patents and Other Novelty Provisions, Including § 102(b)

The other novelty provisions are unchanged.  35 U.S.C. § 102(b), for example, sets forth the one-year absolute bar for patentability.  Any issued patent or publication disclosing an invention, anywhere in the world, or any sale or public use of the invention in the U.S., more than one year before a U.S. application is filed for the invention, renders the invention unpatentable in the U.S.  That holds even if the inventor can prove that he or she completed the invention before the patent, publication, sale, or public use.

That bar is unchanged for design patents.  Design patents are governed by the same rules as utility patents except where specifically noted.  Nothing in the patent rules, including chapter 1500 of the MPEP, says anything about the other novelty rules changing for a design patent.  Therefore, those rules are the same for utility and design patents.

Any questions about design patents or about their differences in timing?  Please leave them in the comments.