In the United States, there are two types of patents - utility patents for devices, methods, articles of manufacture, etc.; and design patents for design configurations of devices and articles of manufacture. Since utility patents are more costly and complicated than design patents, for artists and entertainers new to the patent system, what follows is information on design patents, which are similar in cost and complexity to what is covered by copyright. In the future, we will have more information on utility patents - until then, a patent lawyer can provide more information.
A design patent protects a design configuration of something that you can manufacture, which includes many works of art such as sculptures, mosaics, etc. Such works can also be protected by copyright, so why bother with the patent? Simple - for not that much more money, with a design patent you get much stronger protection and an analysis by the government of how novel and original your creation is (which becomes important when you later sue someone), though such stronger protection is available only for 14 years.
First, let's consider costs, especially since, if at all, most books on art and entertainment law emphasize the "high" costs of patents. For copyright there are two main fees: $30 for copyright registration, and $580 for expedited registration (for those about to sue or sign a deal, and need their copyright registered). For design patents, there are three main fees: $165 for filing a design patent application, $900 for an expedited design patent application, and $230 issuance fee when the Patent and Trademark Office (PTO) approves your application. Usually companies pay professionals to prepare the formal drawings for the design patent application, but the drawing rules are not that complicated for artists and entertainers to prepare their own drawings (using any of a variety of software programs). In short, the filing fees are as follows:
|Provisional (Utility)||$ 80|
If the Patent and Trademark Office were to cut their fees in half (which they could do with certain image analysis and database tools), the design patent application costs would be comparable to those for copyright registration. And for any non-trivial commercial exploitation of your art or entertainment work, the design patent application fees, as is, are not that much more than for copyright registration.
A provisional patent application is less of a patent application and more the reservation of the right to file a formal patent application anytime in the next twelve months. The filing requirements for provisionals are much simpler, and gives you time to further develop your ideas and to see how much commercial interest there is in your new techniques or products. More information about provisionals is available from: US Patent and Trademark Office, 123patent.com (who charge $380 to help you file your provisional, and $500 to handle all of the work for filing your design patent), the NY/LA law firm Ladas & Perry, the NY law firm Brown & Michaels and about.com .
What benefits do you get for the extra cost and effort with design patents? First, the PTO examiners will check to see if your work of art and entertainment is novel/original as well as checking to see how obvious it is (that is how close is it to similar works of art and entertainment). With the copyright system, such an official determination is not done until you file a lawsuit, whereupon a judge pretty much does many years later what the PTO examiner does much earlier.
The second benefit is the power to completely exclude others from manufacturing your new design, as opposed to copyright (which allows an independent creation defense). For both utility and design patents, the rule is that the first to invent is the winner (foreign countries have a slightly different system - first to file, which in most cases has the same effect). This ability to exclude is one feature that makes a patent to be a very powerful business weapons.
Note: a new organization, CreativeCommons.org, is amongst other things, encouraging people to only claim copyright protection for 14 years, the original length of protection in the United States. An editorial in the 25 January 2003 issue of the Economist suggests much the same: "... The 14-year term of the original 18th-century British and American copyright laws, renewable once, might be a good place to start [overhauling copyright laws]." Neither suggests making use of design patents (with 14 years of much stronger protection) which more fully empowers artists and entertainers, is in their better interests, and which escapes the growing logical contradictions of copyright.
One caution: for the most part, you cannot publicly display your new design until you file your patent application (copyright registration is more relaxed, allowing your to file even after public disclosure).
What follows are guidelines to filing and obtaining design patents. It is an edited version of a publication of the PTO, A Guide to Filing a Design Patent Application, available at their Web site.
A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.
An ornamental design may be embodied in an entire article or only a portion of an article, or may be ornamentation applied to an article. If a design is directed to just surface ornamentation, it must be shown applied to an article in the drawings, and the article must be shown in broken lines, as it forms no part of the claimed design.
A design patent application may only have a single claim. Designs that are independent and distinct must be filed in separate applications since they cannot be supported by a single claim. Designs are independent if there is no apparent relationship between two or more articles. For example, a pair of eyeglasses and a door handle are independent articles and must be claimed in separate applications. Designs are considered distinct if they have different shapes and appearances even though they are related articles. For example, two vases having different surface ornamentation creating distinct appearances must be claimed in separate applications. However, modified forms, or embodiments of a single design concept may be filed in one application. For example, vases with only minimal configuration differences may be considered a single design concept and both embodiments may be included in a single application. An example of modified forms appears at the bottom of Page 16.
In general terms, a "utility patent" protects the way an article is used and works, while a "design patent" protects the way an article looks. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.
A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter. Specifically, if at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and is not proper subject matter. In addition, a design to be patentable must be "original". Clearly a design that simulates a well-known or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent application.
The elements of a design patent application should include the following:
In addition, a filing fee is also required. If applicant is a small entity, (an independent inventor, a small business concern, or a non-profit organization), the filing fee is reduced by half.
The Preamble, if included, should state the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article in which the design is embodied. All information contained in the preamble will be printed on the patent, should the claimed design be deemed patentable.
The Title of the design must identify the article in which the design is embodied by the name generally known and used by the public. Marketing designations are improper as titles and should not be used. A title descriptive of the actual article aids the examiner in developing a complete field of search of the prior art. It further aids in the proper assignment of new applications to the appropriate class, subclass, and patent examiner, as well as the proper classification of the patent upon allowance of the application. It also helps the public in understanding the nature and use of the article embodying the design after the patent has been published. Thus, applicants are encouraged to provide a specific and descriptive title.
The Figure Descriptions indicate what each view of the drawings represents, i.e., front elevation, top plan, perspective view, etc.
Any description of the design in the specification, other than a brief description of the drawing, is generally not necessary since, as a general rule, the drawing is the design's best description. However, while not required, a special description is not prohibited.
In addition to the figure descriptions, the following types of statements are permissible in the specification:
A design patent application may only include a single claim. The claim defines the design which applicant wishes to patent, in terms of the article in which it is embodied or applied. The claim must be in formal terms to "The ornamental design for (the article which embodies the design or to which it is applied) as shown.". The description of the article in the claim should be consistent in terminology with the title of the invention.
When there is a properly included special description of the design in the specification, or a proper showing of modified forms of the design, or other descriptive matter has been included in the specification, the words "and described" should be added to the claim following the term "shown". The claim should then read "The ornamental design for (the article which embodies the design or to which it is applied) as shown and described."
The drawing disclosure is the most important element of the application. Every design patent application must include either a drawing or a black and white photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, that nothing regarding the design sought to be patented is left to conjecture. The design drawing or photograph include a sufficient number of views to constitute a complete disclosure of the appearance of the design claimed.
Drawings are normally required to be in black ink on white paper. Black and white photographs, in lieu of drawings, are permitted subject to a few rules.
Black and white photographs submitted on double weight photographic paper must have the drawing figure number entered on the face of the photograph. Photographs mounted on Bristol board may have the figure number shown in black ink on the Bristol board, proximate the corresponding photograph.
Black and white photographs and ink drawings must not be combined in a formal submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and ink drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the ink drawings as compared with the photographs. Photographs submitted in lieu of ink drawings must not disclose environmental structure but must be limited to the claimed design itself.
The Office will accept color drawings or photographs in design patent applications only after the granting of a petition explaining why the color drawings or photographs are necessary. Any such petition must include a fee, three sets of color drawings or photographs, a black and white photocopy that accurately depicts the subject matter shown in the color drawings or photographs, and the specification must contain the following language before the description of the drawings:
The file of this patent contains a least one drawing executed in color. Copies of this patent with color drawings will be provided by the United States Patent and Trademark Office upon request and payment of the necessary fee.
If color photographs are submitted as informal drawings and the applicant does not consider the color to be part of the claimed design, a disclaimer should be added to the specification as follows:
"The color shown on the claimed design forms no part thereof." Color will be considered an integral part of the disclosed and claimed design in the absence of a disclaimer filed with the original application. A disclaimer may only be used when filing color photographs as informal drawings, as 37 CFR Section 1.152 requires that the disclosure in formal photographs be limited to the design for the article claimed.
The drawings or photographs should contain a sufficient number of views to completely disclose the appearance of the claimed design, i.e., front, rear, right and left sides, top and bottom. While not required, it is suggested that perspective views be submitted to clearly show the appearance and shape of three-dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective.
Views that are merely duplicates of other views of the design or that are merely flat and include no ornamentality may be omitted from the drawing if the specification makes this explicitly clear. For example, if the left and right sides of a design are identical or a mirror image, a view should be provided of one side and a statement made in the drawing description that the other side is identical or a mirror image. If the bottom of the design is flat, a view of the bottom may be omitted if the figure descriptions include a statement that the bottom is flat and unornamented. The term "unornamented" should not be used to describe visible surfaces that include structure that is clearly not flat. In some cases, the claim may be directed to an entire article, but because all sides of the article may not be visible during normal use, it is not necessary to disclose them. A sectional view which more clearly brings out elements of the design is permissible, however a sectional view presented to show functional features, or interior structure not forming part of the claimed design, is neither required nor permitted.
The drawing should be provided with appropriate surface shading which shows clearly the character and contour of all surfaces of any three-dimensional aspects of the design. Surface shading is also necessary to distinguish between any open and solid areas of the design. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Lack of appropriate surface shading in the drawing as filed may render the shape and contour of the design nonenabling. Additionally, if the shape of the design is not evident from the disclosure as filed, addition of surface shading after filing may be viewed as new matter. New matter is anything that is added to, or from, the claim, drawings or specification, that was neither shown nor suggested in the original application.
A broken line disclosure is understood to be for illustrative purposes only and forms no part of the claimed design. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is used, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied or applied to that is not considered part of the claimed design. When the claim is directed to just surface ornamentation for an article, the article in which it is embodied must be shown in broken lines.
In general, when broken lines are used, they should not intrude upon or cross the showing of the claimed design and should not be of heavier weight than the lines used in depicting the claimed design. Where a broken line showing of environmental structure must necessarily cross or intrude upon the representation of the claimed design and obscures a clear understanding of the design, such an illustration should be included as a separate figure in addition to the other figures which fully disclose the subject matter of the design.
The oath or declaration required of the applicant must comply with the requirements set forth in the patent rules.
The preparation of a design patent application and the conducting of the proceedings in the USPTO to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Patent and Trademark Office practice and procedures. A patent attorney or agent specially trained in this field is better able to secure the greatest patent protection to which applicant is entitled. It would be prudent to seek the services of a registered patent attorney or agent.
Representation, however, is not required. A knowledgeable applicant may successfully prosecute his or her own application. However, while persons not skilled in this work may obtain a patent in many cases, there is no assurance that the patent obtained would adequately protect the particular design.
Of primary importance in a design patent application is the drawing disclosure, which illustrates the design being claimed. Unlike a utility application, where the "claim" describes the invention in a lengthy written explanation, the claim in a design patent application protects the overall visual appearance of the design, "described" in the drawings. It is essential that the applicant present a set of drawings (or photographs) of the highest quality which conform to the rules and standards which are reproduced in this guide. Changes to these drawings after the application has been filed, may introduce new matter, which is not permitted by law. It is in the applicant's best interest to ensure that the drawing disclosure is clear and complete prior to filing the application, since an incomplete or poorly prepared drawing may result in a fatally defective disclosure which cannot become a patent. It is recommended that applicant retain the services of a professional draftsperson who specializes in preparing design patent drawings. Examples of acceptable drawings and drawing disclosures are included in this Guide so that applicant will have some idea of what is required and can prepare the drawings accordingly.
In addition to the drawing disclosure, certain other information is necessary. While no specific format is required, it is strongly suggested that applicant follow the formats presented to ensure that the application is complete.
When a complete design patent application, along with the appropriate filing fee, is received by the Office, it is assigned an Application Number and a Filing Date. A "Filing Receipt" containing this information is sent to the applicant. The application is then assigned to an examiner. Applications are examined in order of their filing date.
The actual "examination" entails checking for compliance with formalities, ensuring completeness of the drawing disclosure and a comparison of the claimed subject matter with the "prior art". "Prior art" consists of issued patents and published materials. If the claimed subject matter is found to be patentable, the application will be "allowed", and instructions will be provided to applicant for completing the process to permit issuance as a patent.
The examiner may reject the claim in the application if the disclosure cannot be understood or is incomplete, or if a reference or combination of references found in the prior art, shows the claimed design to be unpatentable. The examiner will then issue an Office action detailing the rejection and addressing the substantive matters which effect patentability.
This Office action may also contain suggestions by the examiner for amendments to the application. Applicant should keep this Office action for his or her files, and not send it back to the Office.
If, after receiving an Office action, applicant elects to continue prosecution of the application, a timely reply to the action must be submitted. This reply should include a request for reconsideration or further examination of the claim, along with any amendments desired by the applicant, and must be in writing. The reply must distinctly and specifically point out the supposed errors in the Office action and must address every objection and/or rejection in the action. If the examiner has rejected the claim over prior art, a general statement by the applicant that the claim is patentable, without specifically pointing out how the design is patentable over the prior art, does not comply with the rules.
In all cases where the examiner has said that a reply to a requirement is necessary, or where the examiner has indicated patentable subject matter, the reply must comply with the requirements set forth by the examiner, or specifically argue each requirement as to why compliance should not be required.
In any communication with the Office, applicant should include the following items:
It is applicant's responsibility to make sure that the reply is received by the Office prior to the expiration of the designated time period set for reply. This time period is set to run from the "Date Mailed", which is indicated on the first page of the Office action. If the reply is not received within the designated time period, the application will be considered abandoned. In the event that applicant is unable to reply within the time period set in the Office action, abandonment may be prevented if a reply is filed within six months from the mail date of the Office action provided a petition for extension of time and the fee set forth in 37 CFR Section 1.17(a) are filed. The fee is determined by the amount of time requested, and increases as the length of time increases. These fees are set by Rule and could change at any time. An "Extension of Time" does not have to be obtained prior to the submission of a reply to an Office action; it may be mailed along with the reply. See insert for schedule of current fees. Note: an extension of time cannot be obtained when responding to a "Notice of Allowance".
To ensure that a time period set for reply to an Office action is not missed; a "Certificate of Mailing" should be attached to the reply. This "Certificate" establishes that the reply is being mailed on a given date. It also establishes that the reply is timely, if it was mailed before the period for reply had expired, and if it is mailed with the United States Postal Service. A "Certificate of Mailing" is not the same as "Certified Mail". A suggested format for a Certificate of Mailing is as follows:
"I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Box Design, Commissioner for Patents, Washington, D.C. 20231, on (DATE MAILED)" (Name - Typed or Printed) ------------------------------------------ Signature_________________________________ Date______________________________________
If a receipt for any paper filed in the USPTO is desired, applicant should include a stamped, self-addressed postcard, which lists, on the message side applicant's name and address, the application number, and filing date, the types of papers submitted with the reply (i.e., 1 sheet of drawings, 2 pages of amendments, 1 page of an oath/declaration, etc.) This postcard will be stamped with the date of receipt by the mailroom and returned to applicant. This postcard will be applicant's evidence that the reply was received by the Office on that date.
If applicant changes his or her mailing address after filing an application, the Office must be notified in writing of the new address. Failure to do so will result in future communications being mailed to the old address, and there is no guarantee that these communications will be forwarded to applicant's new address. Applicant's failure to receive, and properly reply to these Office communications will result in the application being held abandoned. Notification of "Change of Address" should be made by separate letter, and a separate notification should be filed for each application.
Upon submission of a reply to an Office action, the application will be reconsidered and further examined in view of applicant's remarks and any amendments included with the reply. The examiner will then either withdraw the rejection and allow the application or, if not persuaded by the remarks and/or amendments submitted, repeat the rejection and make it Final. Applicant may file an appeal with the Board of Patent Appeals and Interferences after given a final rejection or after the claim has been rejected twice. Applicant may also file a new application prior to the abandonment of the original application, claiming benefit of the earlier filing date. This will allow continued prosecution of the claim.