Years ago a non-patent lawyer colleague of mine told me that he had been asked by one of his clients if it was possible to obtain patent protection on the client’s new stuffed animal design. “There was nothing special about what the stuffed animal did or how it was made. It just looked like, you know, a variation on a teddy bear. The client wanted to know if we could get a patent on the look of this fluffy creation, and I said ‘No.’” I informed my colleague that he needed to call the client back and revise his answer, because he had just given bad advice.
When most people think about patents they think about intellectual property protection for a novel idea such as a novel process, composition, machine, etc… This concept of a patent focuses on the invention having functionality, as opposed to a distinctive look, and refers more specifically to a “utility patent.” However, under U.S. law there are more types of patents than just utility patents available. This article takes a look at an often overlooked type of patent, the “design patent.”
A design patent protects the ornamentality of the article claimed. The design application is made up primarily of several different views of the article illustrating the novelty or the special “look” of the article. Practically any three dimensional object can potentially have sufficient novelty to qualify for design patent protection. For example, a quick search of issued patents turned up seven issued design patents on teddy bears in just the last ten years. Automobile manufacturers often patent grill, fender, and other automobile design features. Bottles and retail food containers are frequently patented. Jewelry is another good candidate for design protection.
The test for infringement of a design patent is whether the ordinary observer believes that the allegedly infringing article is substantially similar in appearance to the claimed invention. Design patents are enforceable for fourteen years from the date of issuance and are relatively inexpensive to obtain compared to the aforementioned utility patents.
Design patents can provide powerful intellectual property protection for the patent holder. As with a utility patent, a third-party infringes a design patent by making, using, or selling an infringing article in the United States. There is no such thing as an innocent infringement of a design patent. Also, consumer confusion about the origin of the patented article, a concept that comes up frequently in trademark law, is irrelevant in patent law. If you have a patent on a teddy bear and a third-party makes, uses, or sells a substantially similar looking teddy bear, that party infringes your patent and is subject to all the damages available to patent holders.
So, before you so easily dismiss the possibility of obtaining a design patent on something that just looks interesting, remember to consider the possibility of obtaining design patent protection. Because, as you now know, teddy bears are patentable.
One of the founding partners of Carstens & Cahoon, LLP, Colin Cahoon concentrates his practice in patent law with an emphasis on patent portfolio management.
This blog is maintained by Carstens & Cahoon, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.cclaw.com.