Written by Richard A. Catalina, Jr.

A relatively little known Intellectual Property protection device is the “design” patent. While most are familiar with the general term “patent” – which, unless otherwise specified, means a “utility” patent – few are aware of “design” patents. Often, when a utility patent is not available on an invention, particularly on an article of manufacture, a design patent may be obtained, thereby providing the inventor/applicant with the protection of a U.S. patent.

In the United States, a design patent is a patent granted on the ornamental design of a functional item. Utility patents, on the other hand, are patents that cover the actual functionality of the invention – provided that it is patentable subject matter, new and non-obvious. Design patents, also known in other parts of the world as “industrial design rights,” however, are not directed towards functionality and are limited, exclusively, to the aesthetic, ornamental design of the object, which may comprise anything from furniture, to jewelry, to beverage containers.
That’s right – beverage containers.

That’s right – beverage containers. U.S. Design Patent No. D48,160 granted by the USPTO on November 16, 1915 is directed to the ornamental design of Coca-Cola’s famous glass bottle for its even more famous soft drink (the recipe of which is covered by trade secret).

A design patent is quite similar to a copyright, since both cover and protect an “expression” of creativity. A design patent differs from a copyright, however, in that what is expressed – an ornamental design – must be for an object having practical utility. Otherwise, with no practical utility, the design is art and is more appropriately addressed by copyright law.
Importantly, as with copyright law, an object with a design that is “substantially similar” to the design claimed in a design patent cannot be made, used, copied or imported into the United States. The copy does not have to be exact for the patent to be infringed. It only has to be substantially similar. See Egyptian Goddess Inc. Fed Cir. 06-1562 2008-09-22

The United States Patent and Trademark Office notes the following on its web site, which is quite instructive on understanding the differences between a utility patent and a design patent:

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

While it is possible for an object to be protected by both a design and a utility patent, if the design the subject of a design patent is improperly directed towards functionality or utility (the basis for a utility patent), the design patent may be invalidated.

As noted, copyright law and protection prevents nonfunctional items from being copied.  To establish copyright infringement, the plaintiff must demonstrate that the infringing item was copied from the original or that the infringing item is substantially similar to the copyrighted work (a difficult, grey area).  The copyrighted artistic expression must either have no substantial practical utility (e.g., a painting) or be separable from the useful substrate (e.g., picture on a coffee mug).  With design patents, however, a plaintiff does not have to show that the infringing item was “copied” from the original.  As a result, a design that was arrived at independently can still infringe a design patent.  Importantly, many objects may be covered by both copyright and design patent.

Arguably, because a design patent is narrower in scope, it offers less protection than a utility patent.  However, when a utility patent is not available on an object of manufacture, a design patent often is, thereby providing the inventor with a registered form of protection and making it easier to enforce his or her rights.

Years ago, I represented an individual who invented a stove top griddle with a unique shape that allowed for several large pancakes (or eggs) to be cooked simultaneously.  Clearly, this aspect of his invention related to utility.  However, for a number of reasons (all of which escape my present recollection), we were not able to obtain a utility patent, and thus, filed for a design patent, based on the griddle’s unique ornamental design.  The USPTO granted that application, U.S. Design Patent No. D559,031, Breakfast Griddle, and my client was happy – as part of his marketing campaign, he was entitled to rightfully claim that his “Wonder Griddle” (yes, we registered that trademark with the USPTO as well), with its unique, patented design, will make your life easier cooking breakfast for that large family gathering.