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Prayank Khandelwal

DESIGN PATENT: What, Why and How?

Image source for cover image – Google Patents

Author: Tanmay Bhanushali 

Design Patents are a form of legal protection granted to the visual ornamental characteristic or the aesthetics of a product. The appearance or the presentation of the product must be unique enough to be eligible for a design protection. The design of a Coca Cola glass bottle is one of the first examples which comes to mind as we explore design patents. The design of the bottle includes the shape of the body and the curves along the body of the bottle. While a design patent explicitly protects only the visual appearance of a product and not it’s functional aspect, there have been varied opinions about the curves of the coca cola bottle also being functional in the sense that it gave a better hold in the hands of the user. Similarly, a design patent for a product like headphones only protects the shape and aesthetics of the headphones and not its functional features like noise cancellation etc.

How can a Design Patent be useful?

Looking at the statistics of patent filing in the US over the past fifty years, the percentage of design patents filed out of the total patent applications is only 7%. Most patent applicants seek to protect the functionality of their invention which is generally more difficult to be proven novel and inventive compared to the design of a product. A utility patent gives the owner rights to prevent others from making, using, selling or importing any product that is functionally covered by the claims in the issued patent even if the infringing product does not look similar to what is described in the patent. A utility patent is definitely considered to be a superior protection than design, but it also requires the product to have an inventive and a non-obvious function.

Obtaining a Design patent is comparatively easier than obtaining a utility patent given the limited scope of protection. Filing a Design patent is inexpensive and less time consuming when compared to a utility patent. At times, an idea may be unique even if the product is inspired from a prior invention. The ‘Mighty Carver’, a mechanical knife that looks like a chainsaw, is a perfect example to explain the effectiveness of a design patent. There are several utility patents for a mechanical knife, but the uniqueness of this product lies in the fact that it looks like a chainsaw. Mighty Carver managed to get a deal on Shark Tank with Daymond John and the Design Patent is what hooked the Sharks!

Design Patents and other IPs

Copyrights are also a form of protection for intellectual property like a design. A copyright protects the originality of any creative work once it is expressed in a tangible form. A design can be considered as a creative work too, but it is not recommended to copyright a design of an article that may be mass produced. Section 15(1) of the Copyright Act, 1957 clearly states that the copyright for a design, eligible for a design patent, shall cease as soon as any article, to which the design has been applied, is reproduced more than fifty times by an industrial process.

A registered design of a product like the shape of the Coca Cola bottle can be registered as a Trademark. But if the shape of the bottle was first disclosed in a Trademark, it would not have been eligible for a Design Patent.

Utility Patents require the invention to be novel and to have a unique functionality and the patent protects the functional aspect of the invention. On the other hand, a design patent protects the appearance of a product and cannot be obtained on its functional element. The design elements in a design patent may have a functional purpose but proving that the same function may be achieved using a different design can make the elements eligible for a design patent.

What does Design Patent protect?

A design patent, thus, protects the appearance and aesthetic features of a product. Examples like the Coca Cola bottle and the Mighty Carver cover one category of products. Designs of Mobile phones or even parts of the phone like the screen or the body can be patented. For instance, let’s consider a design of the iPad patented by Apple, and different designs of a foldable screen patented by multiple companies, etc.

[Design of iPad (Source – wired.com)]

You must have heard about limited editions for various products such as cars, mobile phones, etc. The limited-edition cars have the same engine and other performance units as the normal edition, the only difference being the appearance. These limited-edition products stay limited as they are protected by Design Patents preventing anyone else from replicating the design of the product.

[Lamborghini Sian Design (Source- WIPO)]

The Graphical User Interface of websites can also be protected by Design Patents. For example, Google has patented their Search engine user interface. Even a puzzle, board game or an article of jewelry with a unique design can be protected by a design patent.

Why file a Design Patent?

Recently, a YouTube video creator designed his version of an old puzzle. After watching the YouTube video, a company copied his design and began manufacturing the puzzle as a retail item with a slight modification and filed a design patent for it. Since the original video creator did not have any protection for his puzzle, he could not stop the company from selling the puzzle that was originally his idea.

A Design Patent gives the owner the right to prevent others from making, using, or selling a product that is not differentiable by an ordinary observer. The protection under a design patent lasts for fifteen years from the date of issue of the patent. Conditions for a Design to be eligible for design protection are:

  1. The design must be novel.
  2. The design must not be of functional importance to a product.
  3. The design must be non-obvious.
  4. The design must not include any scandalous or obscene matter.
  5. The design must not be disclosed in public by prior use or in any other way.
  6. The design must be visible on the article when in use.

Design patent can also be considered if the product has an inventive functionality or has a utility patent. Even if the technology is protected, someone may copy the design and tweak the technology to bypass the utility patent. This could lead to confusion between the products and loss in profits.

The importance of filing patents in the ever-evolving field of technology therefore cannot be overemphasized upon. Whether you are an investor, general counsel, researcher, inventor or CEO with an interest in technology – protecting and optimizing your IP portfolio is essential. We, at Photon Legal can help you maximize your patent portfolio with unmatched IP and technical excellence. For any patenting requirements, do reach us out at: photon.ip@photonlegal.com.

About: Prayank Khandelwal