• Design Patents
  • July 6, 2011
  • Law Firm: Klemchuk Kubasta LLP - Dallas Office
  • According to the Patent Act (35 U.S.C. § 101), patents may be granted for certain types of functional inventions, processes, or compositions of matter.  Patents may also be granted on new varieties of asexually produced cultivated plants as well as ornamental designs.  The latter is referred to as “design patents.”  

    What design patents cover
    Design patents protect the non-functional, ornamental designs of articles of manufacture.  While a patentable design may have functional or structural aspects, the ornamental aspect of a design must not be dictated by function alone.  One test of ornamentality is whether the article of manufacture would still function without the design or with a different design.  If so, the design is likely to meet the ornamentality requirement.  If the functional or structural aspect of a design is new and otherwise patentable, it may also be eligible for a utility patent.

    Requirement to obtain a design patent

    The basic requirements of patents set forth in 35 U.S.C. § 101 et seq. apply to design patents.  To be patentable, a design must be new, non-obvious, and as discussed above, non-functional. To determine whether a design is new, the USPTO will search existing design patents, current design patent applications, and literature pertaining to the article of manufacture and type of design that might reveal that the design to be patented is not new.  The body of information pertaining to a given design is called the “prior art.”  If an examination of the prior art reveals that the design has been patented previously, described in the literature or used or offered for sale for a certain amount of time before a design patent was applied for, the design will be ineligible for a patent. To be patentable, designs must also be original, which means that a design found in nature, may not be patented.

    Non-obviousness generally applies to improvements to existing designs and requires that a person reasonably skilled in the field within which the design is classified would not consider the new design to be an obvious progression from an existing design or combination of existing designs as revealed by the prior art.  The non-obviousness standard is difficult to apply and entails consideration of the scope and content of the prior art, the differences between the design for which a patent is sought and designs found in the prior art, and the level of skill exhibited in the prior art.

    Rights granted by a design patent
    When a design patent is issued, the patent gives its owner (the patentee) a right to prevent others from using, making, offering for sale, selling, or importing the design without the patent owner’s permission for a period of 14 years from the grant date of the design patent.  Utility and plant patents, on the other hand, have a 20-year term.  After the expiration of the 14-year term, the public owns the design patent and it no longer is enforceable by the patent owner.  The Patent Act provides a design patent owner the right to recover damages for infringement as well as injunctive relief.