US INTELLECTUAL PROPERTY PROTECTION FOR

DESIGNS

Trademarks Copyright Patents Trade Secrets

Subject matter

Indication of source

Expression fixed in a tangible medium

Inventions; discoveries

Information unknown to general public that provides competitive economic advantage

Symbol ™ ℠ ® © Patent No. __ none

Acquire Rights Use; expand

protection through registration

Creation; expand protection through registration

Issued Patent (following application process)

keep it a secret, procedures enacted

Purpose Consumer protection

Encourage creativity

Encourage invention

Fair competition

Law Federal; state Federal Federal State

US Patents

• Three types: – Utility– DESIGN– Plant

DESIGN PATENTS• Protect the “look” or

appearance of an article of manufacture

• Protection lasts 14 years from the date of issue

Apple, Inc.

STATUTORY REQUIREMENTS OF PATENTABILITY

• “Design” must be:– New– Useful– Non-obvious

STATUTORY BARS

• Transitioning from “first to invent” to “first inventor to file”* (* effective March 16, 2013)

• 1 year from your first publication or sale or offer for sale, you must file your patent application

• Examples– Public use– Public sale– Publication

Design Patent Government Filing Fees**September 26, 2011

Large entity

Application Fee $250

Search Fee $120

Examination Fee $160

Issue Fee $990

Total $ 1520

Enforcement

• Standard for Infringement– “Ordinary Observer” Test- “would an ordinary observer, familiar

with prior art designs, be deceived into believing that the alleged design is the patented design.” (Egyptian Goddess, Inc. v. Swisa, Inc, 543 F.3d 665, (Fed. Cir. 2008))

– “Factor out” functional aspects (Richardson v. Stanley Works, 597 F.3d at 1288 (Fed. Cir. 2010))

– But… if the patented design includes elements, both functional and ornamental, elements are included in the “ordinary observer” test. (Elmer v. Take-Out Express, 67 F.3d 1571 (Fed. Cir 1995))

Comparison with other US Intellectual Property Protection for Designs

• Copyrights

• Trade Marks / Trade Dress

WHAT CAN BE COPYRIGHTED?

• Original

• Works of Authorship

• Fixed in a Tangible Medium

• Of Expression

DURATION OF COPYRIGHT

• Vest upon creation in author of work

• Duration– Life of the last surviving author + 70 years– For works made for hire, anonymous works,

pseudononymous works, shorter of:• 95 years from first publication or• 120 years from date of creation

REGISTRATION• Copyright automatic, but to register…

– $35 for electronic application– Presumption of validity (5 years)– Necessity for entry into court– Give notice using ©

BENEFITS OF REGISTRATION• Prerequisite for lawsuit to enforce copyright

• Evidence of validity of the copyright and facts stated in the certificate if registered within 5 years of first publication

• Availability of statutory damages and attorneys’ fees

Trade Dress Defined

• Trade dress refers to the visual appearance of a product or its packaging that signifies the source of the product to consumers

• Covers non-functional aspects (e.g. shapes, designs, colors, or materials which do not serve a utility or function outside of creating recognition in the consumer’s mind.

• Protected in the U.S. by the Lanham Act (Federal level, same as U.S. Trade Marks) and Common Law (State level)

Protection by registration (Federal) and/or actual use common law (State)

• Optional Formal registration for Federal Protection…– Principle Register or Supplemental Register

• Protection requires that the trade dress be “distinctive.” – (consumers perceive a particular trade dress

as identifying a source of a product)

BENEFITS AND DISADVANTAGES OF Trade Dress Protection

Benefits…– Potential infinite duration of protection

Disadvantages…– Requires the trade dress to have acquired

distinctiveness– Must “police” the “trade dress” in order to

maintain protection

Stephen Weyer

Email: sweyer@stites.comFacebook: facebook.com/stephen.weyer.esq

LinkedIn: www.linkedin.com/in/stephenweyer

Twitter: @weyer_esq

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