When seeking a patent most inventors want to protect the function of the invention, because a utility patent will be able to prevent others from using, selling, or importing into the United States any product that is functionally covered by the utility patent. However, what if you cannot get a utility patent because the function is not unique, and is obvious, but looks different. This is where a design patent comes in. Most attorneys and inventors in the past have had a very negative view on design patents, and do not recommend filing an application on the unique look of your invention. However, that has changed and with the correct patent strategy you can protect many aspects of your design.
Filing only one design patent on your invention will only protect the bare minimum. To get full coverage of your design we recommend filing at least two if not more depending on the different aspects of your invention. With the backlog of the United States Patent and Trademark Office it can take 3 or more years to obtain your utility patent, whereas with a design patent application it can be awarded in a few as 6 to 18 months. So, if you have a unique look or feel like you cannot receive a utility patent the design patent is the way to go. A good example is Disney, as shown above they just received a design patent on Captain America’s Shield. The design patent includes some highly detailed layouts of the shield’s front and back features. Disney knows the value of both utility and design patents have on protecting its intellectual property.
The design patent infringement test has changed for the better because of the case Egyptian Goddess v. Swisa. The infringement test is now the “ordinary observer” test, which makes it easier to prove infringement. The test asks the jury to look at the accused infringing product, and then to look at the design patent and determine if the product is a copy. Another example of the value of a design patent is Apple’s verdict against Samsung who now received a $533 million settlement for infringing three of Apple’s design patents. So, if you have a product that is both functional and has a unique look consider filing a design patent, or if your invention cannot receive a utility patent, then consider filing just a design patent protecting its unique look.