Intellectual Property Law Knowledge Center

Don’t Forget About Design Patents

November 9th, 2020

By: Keith A. Jones

Say you have a great new invention. What is one major thing you need to do before releasing it to the world and making your millions? Get a patent! Don’t stop there, though. In many cases, it makes sense to get a design patent in addition to a standard utility patent.

What is a design patent, you ask? When a person normally thinks of a patent, they think of a utility patent, which protects against infringement by devices that have the same structure or functionality as your invention. However, as any marketing guru will tell you, not only does your new invention have to be a great device, it also has to look great so that it stands out on the shelves and attracts consumers’ attention. This is where a design patent comes in – it protects the appearance of your great new device.

For example, if you’ve invented a great new running shoe that creates additional comfort by attaching the sole to the boot of the shoe in a unique way, a utility patent will protect that functionality. But in a crowded market like running shoes, your product also will need to look stylish in order to compete. For example, a design patent can complement your utility patent by protecting the unique look of your shoe so that a competitor cannot copy your snazzy look-and-feel and circumvent your patent by structuring the sole-boot connection differently.

In addition to offering protection that a utility patent cannot, design patents also have several distinct advantages over utility patents. For one, they are typically much cheaper and faster to obtain than a utility patent. Second, if a design patent owner prevails in an infringement case, they could be entitled to the full profits earned by the infringer, not just a royalty percentage as in a utility patent case. Finally, if multiple defendants are selling a product infringing a design patent (i.e., a manufacturer and a retailer), the patent owner may be able to collect profits from all of them. Conversely, in a utility patent case, damages from the first sale of the product by the manufacturer implicitly will license any subsequent sellers such as the retailer.

In sum, any time you have a great new invention and are looking for patent protection, be sure to ask your patent attorney if a design patent would provide you with additional protection.

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