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A Design Patent

A design patent is a form of intellectual property that protects the way an object looks rather than how it works.  Unlike a utility patent, which guards an invention’s functionality, a design patent focuses on the visual characteristics, like the shape, configuration, or surface ornamentation, and prevents others from copying that unique appearance for a set period. Design patents are typically cheaper and faster to obtain than utility patents, making them valuable for protecting the look of products and fending off imitators.

The SurgiSil Patent Conflict

Whether you want to protect a product’s operation (a utility patent), or its distinct visual design (a design patent), the invention must be patentable over the prior art. SurgiSil, L.L.P. faced this challenge when they applied for a design patent on a lip implant with a particular shape. The patent examiner rejected their application, citing a prior art reference – a similar looking art tool. This raised the question: can something be patented for one purpose (art tool) but not another (lip implant) if the shapes are alike?

SurgiSil’s Lip Implant

Art Tool

The Ensuing Legal Discourse

The Patent Trial and Appeal Board (PTAB) initially sided with the examiner, arguing that the design itself, not its intended use, mattered for patentability. This could have been a blow to SurgiSil’s hopes. However, the Federal Circuit Court stepped in and overturned the PTAB’s decision. The Court clarified that a design patent is limited by the specific article it’s claimed for. Simply put, similar shapes for different objects can be distinct designs. In this case, the lip implant and the art tool were fundamentally different products, and their intended uses were vastly different.

Key Takeaway

The SurgiSil case is a significant reminder for companies that design patents are specific. When applying for a design patent, clearly identify the article of manufacture your design is for. This helps the Patent Office understand what you’re trying to protect and ensures a more accurate assessment of your invention’s novelty. By understanding design patents and this key principle from the SurgiSil case, your invention patent attorney can better safeguard the unique visual characteristics of the products your company creates.

For small to midsize companies, the SurgiSil case underscores the value of understanding design patent law nuances. While utility patents protect the utility or functionality of an invention, design patents safeguard its unique visual appearance. Investing in design patents can be a strategic move, especially in industries where aesthetics play a significant role in consumer preference. By securing design patents for distinctive product designs, companies can protect their brand identity, differentiate themselves in the market, and ward off competitors aiming to mimic their visual appeal. In a world where first impressions matter, design patents offer a powerful tool for small to midsize companies to secure their competitive edge.

In addition to protecting brand identity and market differentiation, design patents also offer valuable enforcement mechanisms against infringement. Unlike utility patents, which often require complex and costly litigation to prove infringement based on functional aspects, design patents rely heavily on visual comparison. This makes them particularly suitable for quick resolution of infringement disputes through cease-and-desist letters or negotiations, potentially saving you time and resources.

Moreover, design patents can serve as a deterrent to potential infringers, as the prospect of facing legal consequences for copying a unique design may dissuade competitors from engaging in such. Therefore, by strategically leveraging design patents, companies of all sizes can not only protect their investments in innovative design but also maintain a competitive edge in the marketplace.

Yes, We Can Help!

At      The Law Office of Mario Milano, we specialize in Intellectual Property Law. These fields form the basis of our legal practice:

We will be glad to be your intellectual property attorney, help you secure and safeguard your ideas and inventions, and ward off any potential threats that may surface.