When the Coca-Cola Company created its iconic glass bottle, it protected that unique shape of that bottle by applying for the intellectual property safeguard known as a design patent. The design was eligible for patent protection because it was novel, didn’t change the way that a glass soda bottle functions, was “repeatable” as it could be manufactured again and again unlike an original work of art, and featured a unique shape. It was smart of the Coca-Cola Company to patent this particular design because it set its soda bottles apart from those of its competitors. If Coca-Cola had failed to obtain intellectual property protection for this design, any of its competitors could have used it or very similar likenesses for their products, which may have harmed Coca-Cola’s share of the market.
When individual inventors and innovative businesses like Coca-Cola create a unique design for an existing manufactured product or machine, they need to apply for design patents to secure enforceable intellectual property rights. During the application process, inventors generally work with experienced intellectual property attorneys to conduct design patent searches to better ensure the success of their applications. If an existing design too closely resembles the one identified in a patent application, United States Patent and Trademark Office will reject the patent request. By conducting a patent search early in the application process, inventors of innovative designs can determine whether they will need to “tweak” their designs to better ensure that the USPTO will deem them original (and therefore eligible for patent protection).
Design Patent Eligibility Requirements
The USPTO grants patent protection to designs of existing manufactured products and machines. To be eligible for a formal patent, a product or machine design must meet specific criteria. Generally speaking, the USPTO extends legal protection to innovative designs that are “useful,” “repeatable,” and feature unique ornamentation or unique shape or structure. The design itself may not affect the functionality of the product or machine, as it must be separable from the product or machine’s intended use. Additionally, eligible designs cannot generally be separated from the product or machine and must be visible when the machine or product is being used as intended.
It is worth noting that the USPTO does accept patent applications for digital designs of screen layouts, icons, fonts, etc. However, this protection only extends to these images when they are displayed on a screen. For example, when Twitter developed its famous icon, its screen display form was eligible for patent. However, Twitter had to register a trademark of the icon as a branding image to legally protect its graphic in non-display forms.
Design Patent Searches – The Basics
Before you send your non-provisional design patent application to the USPTO, you’ll want to make sure that another inventor doesn’t already hold the rights to your design. If an already-protected design is remarkably similar to yours, you’ll want to ask your intellectual property attorney if it is a good idea to tweak your design or if the USPTO will likely determine that your design is original enough to be considered eligible for patent protection. To determine whether your design is novel or not, you’ll need to conduct a patent search.
Most of the time, designers either conduct a “first look” patent search and allow their intellectual property attorney to do a more comprehensive “final look” or they leave the process of patent searching entirely to their attorney. Why? Patent searches are notoriously time-intensive and labor-intensive. It isn’t unusual for a non-attorney to spend upwards of 100 hours conducting a patent search without legal assistance. It’s certainly possible for an inventor to conduct a design patent search on their own in an effort to save money. However, searches by lay persons must be conducted meticulously and methodically so that no relevant information “falls through the cracks.” The main benefits associated with allowing one’s attorney to conduct a patent search are threefold:
- Intellectual property attorneys have extensive experience with patent searches and know how to conduct comprehensive research and analysis efficiently.
- Intellectual property lawyers often have access to research and analysis tools that lay people (and even most companies) can’t afford to access for patent search purposes.
- Most inventors aren’t interested in spending upwards of 100 hours that they could be creating stuck in front of patent research databases. Allowing one’s attorney to handle this process frees that time.
With that said, inventors interested in conducting patent searches on their own (either “first look” or comprehensive searches) can do so by using various patent search tools.
Patent Search Tools – An Introduction
If you live near a USPTO library, you can search for existing design patents at this location. You may even opt to work with a specialist at your USPTO library location so that you can receive knowledgeable guidance as you begin your search. You’ll want to call your USPTO library location for details about this service before committing to this option so that you know what kind of timing and fee restrictions may impact your search.
If you’d prefer to search for existing design patents from the comfort of your home or office, you will probably want to start by using both the USPTO’s website and Google Patent Search. You can also use paid patent search options available online for a few hundred dollars. These services may make searching existing databases a little easier to track and analyze. However, you’ll want to research the reputation of any service you’re considering so that you don’t get stuck paying for a service that doesn’t make your search process meaningfully easier.
You’ll begin by searching keywords for each of the fundamental features of your design. This process will likely lead you to many results you’ll need to analyze, which will (in turn) lead you to even more results you’ll need to check against your design. Make sure to have a system in place to track everything you’re doing, or you’ll easily get “lost” in your sea of research.
Intellectual Property Assistance Is Available
If you’re interested in securing a patent for an eligible design of an existing product or machine, please consider scheduling a consultation with an experienced intellectual property attorney at LawTrades today. Our team is committed to helping innovative individuals and businesses alike safeguard their creative work. We purposefully ensure that our approach to intellectual property guidance is personalized, efficient, and cost-conscious so that inventors can obtain the legal support they need, whether they work out of a garage or a multi-national corporate office. We look forward to hearing about your design and helping you to secure necessary legal safeguards for your innovation.