Like most patent attorneys, I spent the early years of my career being a design patent skeptic. Design patents were fine for readily apparent uses such as ornate packaging or even the products themselves when they clearly deviated from the ordinary in their shape or appearance. But, to be honest, the possibility of a design patent rarely came immediately to mind when approached by a client with a new device. Occasionally, because design patents are typically seen as easier to obtain, I might suggest filing a design application in addition to a utility application to ensure some measure of protection and/or if the subject of the utility application unquestionably manifested some ornamental qualities in addition to the function of the device.
Lately, however, I’ve had reasons to reconsider the value of the design patent, and I no longer hesitate to recommend them early-on in my discussions with clients. Of course, I’m always candid with the client as I explain the major shortcoming of the design patent and by that I mean that design patent protection will be confined to the overall appearance of the product or device, i.e., the design patent will offer no freedom from competing products or devices that function or perform in a similar fashion but bear no resemblance to the design patented product or device.
However, in spite of the perceived shortcoming, when the client is advised that the design patent application is considerably less expensive, is much more likely to issue and will enable him to market and sell his device or product as “patented” quicker and without regard to the type of patent obtained, he frequently becomes receptive to the possibility of filing on the design of his device or product.
And, there is one more argument that can be made in favor of the design application, and this argument results from experiences with the US Patent Office. Over the past few years, I’ve noticed, and I’m not alone, that there is a lack of appreciation, if not open hostility, by the patent examiners toward the patentability of simple mechanical devices and products. The test for patentability used to be that device or product be new, useful and unobvious. The bar for what is unobvious appears to have been raised significantly over the years. Requiring “something more” in order to be considered unobvious and patentable in view of the prior art means that more applications encounter the likelihood of being finally rejected or suffering the ignominy of having claims so narrow that the issued patent is confined to encompassing little or nothing more than the applicant’s most peculiar embodiment.
After spending time and resources to prepare and file a utility patent application in expectation of receiving a patent affording a reasonable berth of exclusivity from competing products or devices and then either being denied any patent or being constrained to accept claims providing protection from nothing more than a Chinese copy, all but the hopelessly naïve will soon ask if there is, in fact, any difference between design and utility patents—at least with regard to simple mechanical products or devices. This is why I am no longer reluctant or hesitant to recommend and even encourage the filing of design applications when the applicable scenario presents itself.