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: [email protected]: facebook.com/stephen.weyer.esq
LinkedIn: www.linkedin.com/in/stephenweyer
Twitter: @weyer_esq
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