1. © 2011 Hultquist IP. All rights reserved.
Design Patents and Utility Models Supplements and/or Alternatives to Utility Patent Protection
Vincent Gustafson
Friday, February 4
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2. BRIEF COMPARISON Utility Patent Design Model What is protected?
Utilitarian
features
Ornamental
Where available?
U.S.
and foreign
Selected foreign countries only
When examined?
Before issuance
After issuance
Term?
~ 20 years
~ years
~ 8-15 years
Relative cost?
$$$$ $
$ to $$$
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3. © 2011 Hultquist IP. All rights reserved.
Design Patents
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4. © 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
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5. DESIGN PATENT EXAMPLES
Coca-Cola bottle
U.S. D48,160
Samuelson, A.
(1915)
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6. DESIGN PATENT EXAMPLES
Statue of Liberty
U.S. D11,023
Bartholdi, A.
(1879)
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7. DESIGN PATENT EXAMPLES
(Yoda) Toy figure
U.S. D265,754
Lucas, G., et al.
(1982)
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8. DESIGN PATENT EXAMPLES
Apple iPhone 3G
U.S. D629,799
Andre, B. (& Jobs, S.) et al.
(2010)
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9. VALUABLE TECHNICAL AREAS
Jewelry
Consumer electronics
Vehicles and vehicle parts
Toys
Packaging
Shoes
Furniture
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10. 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
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11. 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
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12. 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)
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13. © 2011 Hultquist IP. All rights reserved.
Utility Models
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14. © 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
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15. SUMMARY OF KEY JURISDICTIONS
Country
Maximum Term
PCT Route Available
Conversion from Domestic Patent Application
Australia
8 years
Divisional only
Yes
China
10 years
uncertain
Germany
Japan
years
South Korea
15 years
Taiwan
10-12 years No
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16. 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
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17. 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
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18. 2010 FILING BREAKDOWN - CHINA -
Data Source: SIPO Website
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19. © 2011 Hultquist IP. All rights reserved.
THANK YOU
© 2011 Hultquist IP. All rights reserved.