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Design Patents and Utility Models Supplements and/or Alternatives to Utility Patent Protection Vincent Gustafson Friday, February 4 © 2011 Hultquist IP. All rights reserved.
BRIEF COMPARISON Utility Patent Design Patent Utility Model What is protected? Utilitarian features Ornamental features Utilitarian features Where available? U.S. and foreign U.S. and foreign Selected foreign countries only When examined? Before issuance After issuance Term?~ 20 years~ years~ 8-15 years Relative cost?$$$$$$ to $$$ © 2011 Hultquist IP. All rights reserved.
Design Patents © 2011 Hultquist IP. All rights reserved.
DESIGN PATENT BASICS Protects the ornamental appearance of a functional item Must be novel and non-obvious Confers temporary right (e.g., 14 years) to exclude others © 2011 Hultquist IP. All rights reserved.
DESIGN PATENT EXAMPLES Coca-Cola bottle U.S. D48,160 Samuelson, A. (1915) © 2011 Hultquist IP. All rights reserved.
DESIGN PATENT EXAMPLES Statue of Liberty U.S. D11,023 Bartholdi, A. (1879) © 2011 Hultquist IP. All rights reserved.
DESIGN PATENT EXAMPLES (Yoda) Toy figure U.S. D265,754 Lucas, G., et al. (1982) © 2011 Hultquist IP. All rights reserved.
DESIGN PATENT EXAMPLES Apple iPhone 3G U.S. D629,799 Andre, B. (& Jobs, S.) et al. (2010) © 2011 Hultquist IP. All rights reserved.
VALUABLE TECHNICAL AREAS Jewelry Consumer electronics Vehicles and vehicle parts Toys Packaging Shoes Furniture © 2011 Hultquist IP. All rights reserved.
DESIGN PATENT BENEFITS Inexpensive to file (often cheaper than professional search and analysis) Rapid examination and issuance Relatively low patentability threshold Enforceable in federal court No maintenance fees © 2011 Hultquist IP. All rights reserved.
DESIGN PATENT LIMITATIONS Narrow scope; easy to design around Limited to one or few embodiment(s) Single claim is limited to “[article] as shown and described” Not extendible to features dictated solely by function © 2011 Hultquist IP. All rights reserved.
RELATION TO UTILITY PATENTS Utility and design patents can extend to the same product Due to possible prior art effect, consider filing utility and design patents simultaneously Priority can be claimed from design to utility application, and vice-versa (U.S. only) © 2011 Hultquist IP. All rights reserved.
Utility Models © 2011 Hultquist IP. All rights reserved.
UTILITY MODEL BASICS Issues rapidly after formalities examination Substantive examination deferred until after issuance “Non-obviousness” requirement less stringent or absent Protectable term shorter than utility patents Similar to utility patent after examination complete © 2011 Hultquist IP. All rights reserved.
SUMMARY OF KEY JURISDICTIONS CountryMaximum Term PCT Route Available Conversion from Domestic Patent Application Australia 8 yearsDivisional onlyYes China 10 yearsYesuncertain Germany 10 yearsYes Japan yearsYes South Korea 15 yearsYes Taiwan yearsNoYes © 2011 Hultquist IP. All rights reserved.
UTILITY MODEL BENEFITS Rapid issuance Low cost Cost of examination and prosecution may be deferred until after infringer is identified Well-suited to cover incremental improvements after basic product disclosed Judicial enforcement similar to utility patent Limited opportunity to convert to utility patent © 2011 Hultquist IP. All rights reserved.
UTILITY MODEL LIMITATIONS Not applicable to methods/processes in certain jurisdictions Limited ability to claim functional language in certain jurisdictions Limited ability to pursue and/or maintain both utility patent and utility model in certain jurisdictions Uncertain scope until examination is complete © 2011 Hultquist IP. All rights reserved.
2010 FILING BREAKDOWN - CHINA - Data Source: SIPO Website © 2011 Hultquist IP. All rights reserved.
THANK YOU © 2011 Hultquist IP. All rights reserved.
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