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Written by : Wilton Snyders
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everyone we're here talking about how to file a design patent application and hold on a second oh I'm sorry I left my air plot in did you know that air pods super popular I think Apple sold over 900 thousand this in 2018 alone but did you think that there's both design and utility patent protection we'd be right so air pods are covered under at least one u.s. design patent ok the case together with the two ear pods under design d8 0 1 3 1 4 there are 44 total patents that protect the Apple earpods all right we're going to talk today about design patents and what it means to put together an application for submitted to the Patent Office want to introduce bolt ideas the inventors guide to patents I wrote this book just a year and a half ago I encourage anyone out there that's interested in getting into this subject matter maybe it's just starting or kind of wants to refine I'm gonna take the dust off of the knowledge you might have had in the years past this is the book to start with okay it's a 110 pages easy read not legal jargon this cuts through all the major questions that almost every vendor halves but what's the major difference between eligibility patentability the difference between patents and trade secrets all that is done so please go our website at bold IP comm and pick up your free copy today so without further ado I want to introduce myself I'm JD who Vener I'm a registered USPTO patent attorney managing partner here and CEO of bold patents law firm I'm here today to talk with you about design patents and what it means it gives your design filed and patented with the USPTO so first and foremost with the with the overall idea of designs understand the major difference between design and utility design patents protect just the ornamental way that something looks right back to our air pods right you see how this is curved in shape and it has you know fairly symmetrical edges but the fact that it has this hinge and it moves seamlessly that's not covered under the design patent just the fact that it looks like this right and then it has a hinge on the top and it's proportionally sized so it's on the the upper portion and that the shape is sort of a hemispherical right all those details about just the appearance that's was protected under design so this shape is really the heart right the ornamental appearance of what your invention is that's what you're going to go to protect with the design pack all right and so what I want to do is walk with you a little bit about the essences of the application okay one of the different parts of it if you in a hurry and you can't watch this whole video I've set up sometimes in the table of contents format you to jump to the section that you want to hear more about I wanted mentioned first off just like utility pens one of the key thing about design path is measuring patentability and you start by doing in novelty search so with design patents it's a little bit harder to do keyword searching whereas utilities of court if you have all the functional aspects the written description there's a whole lot more to work with in terms of what to search for with a design patent application or the potential app all you have is the shape okay it's hard to search shapes now with technology we're getting better and better but it is essential to conduct a search to confirm that what you're what you've created this ornamental shape is actually new so do your own homework first and then hire a professional to get the search done right once we confirm there's nothing else out there and that we don't think it's an obvious variant of another prior art that's been filed you've got it you don't have to obviously don't have to show utility because that's not what you're gonna eventually be able to claim and next up is the application drafting the preamble the preamble is called the preamble right just like the Constitution it sets the state this is your title and describes who the inventor or venters are the title needs to be quite simple and again it needs to describe the shape and the contour the ornamentation those are kinds of attributes you should be highlighting in the title you shouldn't be coloring it with any functional language and you shouldn't you should not be embellishing the title keep it really short and sweet a nice example for a title might be dual earbud compartment write something similar like that that's it and move on so simple story about how to make sure that your invention is not functional all right and to decide whether or not to follow a design versus a utility there's a Supreme Court case brand ear brand away you highlight that here this case was all about a bike rack now you've probably seen bike racks that look like this all around town let's just sort of become the standard it started out actually being a work of art okay this was a sculpture that this artist created now it had a sort of an industrial application and it was awarded industrial design of the year right way back when the interesting thing is that it is unprotectable under copyright law because of the nature that it is indeed extremely functional so there's this interplay between functionality under design underneath the utility times and copyright okay so there's utility in copyright they have sort of this boundary but as soon as something becomes functional it belongs in the domain of utility same goes for your design right if you're out there you're an artist and you're designing something as soon as it becomes functional it's not going to be eligible for design patent application and gonna get rejected what you're gonna do with a claim is merely the ornamental appearance okay what it looks like back to that shape discussion we talked about before one of those curves look like what are the relationships and the proportions that's what's protectable so in the application itself you're gonna need to mention across references the cross references are really the other applications to patent applications that you're that you're being able to stand on their shoulders right here you're using what's been done before whether it's you know string your tying your air buds of the string or your putting them together in some compartment but it's wired right those are the references right and the actual shapes and designs that came before you so you've gotta give credence and give give some credit to those inventors before you and that's what the examiners will do and they perform their search they're gonna start with those references and the citation that you have the claim right so we talked about in separate video about oh my gosh all the hard work goes into writing a utility claims up design patents it's one life I mean I'm serious it's one line it simply says the ornamental design as shown and described everything everything about your invention lies on the drawings or photographs in the word cases so drawings you know in a design patent have additional requirements on top of those that are required of the utility level that the design pens must show all surfaces okay and so if the surface has depth to it curvature it must
Thanks for your comment Leonore Breault, have a nice day.
- Wilton Snyders, Staff Member
so you've got a design that you want to protect this video is going to answer all your questions about how to patent a design be sure to watch all the way to the end because we give you some really important information about the intricacies of patenting designs because it's not always intuitive so if you're new to the channel my name is dylan adams i am a patent attorney and author of the best-selling book patents demystified which is an insider's guide to protecting ideas and inventions used by inventors and entrepreneurs worldwide including top universities like harvard stanford and mit you might also recognize me from being featured on cnbc's hit show the profit with marcus lemonis so in my patent practice and as a patent attorney i work with clients of all sizes including fortune 100 companies startups and shark tank companies and this channel really helps give you the inside information the secrets if you will on how i help these clients be successful so be sure to subscribe to the channel click that little bell icon so that you get notifications of when new great videos are coming out so yeah let's go ahead and jump right in to the content so you've got an awesome design that you want to protect now it's important to kind of figure out what sort of designs are protectable and how they're protectable and let's first talk about intellectual property so designs are protectable by intellectual property and there are four main types of intellectual property there are trade secrets there are copyrights there are patents and there are trademarks and you know certain type of designs are going to be protectable by most of these so with trade secret trade secrets is going to protect designs that you know you aren't going to be publicly disclosing things you know but while while they're still in development trade secret may protect those things but that's not really why not why we're here i mean we're talking about designs these are going to be products that you're going to be uh selling these are going to be public things so it's probably going to be more of a copyright trademark or patent protection that's going to be relevant um so designs you know things like artistic works those can be protected by copyright trademarks there can be some trademark protection for designs if you have um you know like a specific trade dress or say you know a logo there can be designs like that that can be predictable but what we're talking about here is design patents patenting designs of things and there are two types of patents that are are going to be relevant here both a utility patent and a design patent it's a bit of a misnomer and something that gets people confused they think well i want a patent a design of something i need a design patent which is not which is typically honestly not the case usually what they want is actually a utility patent so let me tell you about utility patents versus design patents and why most the time a utility patent is going to be with the way to go mo some of the time a design patent as that application is going to be where they go and there are some cases where you're actually going to want to file both on the same product okay so here's the thing with design patents they cover a single ornamental design of an art article of manufacture so there's a couple important things there one is it has to be useful articles um it's going to be you know anything you know that is utilitarian in nature and there are some things that are kind of surprisingly um you know fall in that category you know things like like furniture furniture is very artistic at the same time you know the design of furniture that would be something you would have to protect with a design patent but with design patents they are very specific to one design if you look at a design pattern or a design patent application it is line drawings of every perspective you know like left right front side top bottom maybe perspective views it's going to be one of one design so design patents they're good in the sense that they're pretty easy to get through they're relatively inexpensive but they're only protecting that one design okay that's why design patents don't work a lot of times for most products because yeah you may have protection on that one design but that's not what's really important the the important thing is the variation of design it's about the functionality that's where utility patents come in so design patents they cover a picture you know you have a picture of one specific design utility patents they cover things with with words yes you'll have descript descriptions and drawings in a utility patent application but you're not limited to one specific look you can have different variations there can be really broad utility patents that cover a lot of different variations or there can be some really narrow narrow utility patent applications that you know effectively have the same scope as a design application because they are so narrow and so specific um that you know it's essentially you know one very specific design that that's covered but a lot of times utility paths are going to be a lot more powerful like i said in addition to covering you know sort of the physical configuration of things you know in that sense it's kind of covering a design as well it can cover methods of using something methods of manufacture so utility patents have the ability to cover functionalities in addition to physical configurations of things and they're able to do it a lot more broadly so then why wouldn't you always file a utility application utility applications there are a lot it's a lot higher of a bar to get a utility patent application issued you have to have a product that is new and non-obvious compared to everything that is out there with the design usually it's pretty easy as long as there's no one exact design that's exactly what you have you're going to be able to get your design patent application through and usually pretty quickly whereas with a utility application you know there's going to be more of a negotiation you're going to be trying to get the broadest scope possible it's not just a binary thing where you have a patent or you don't with utility patents it's you know do you have a broad patent that covers a lot of variations or is it really narrow and specific to you know only one very narrow design which is which is not a good thing so that's why there's a negotiation there's going to be rejections and there's going to be a lot more prior that's going to be relevant to a broad variety of things and that's why the process is going to be a lot longer equals a lot more expensive and it's a lot more difficult if you have a design that is fairly generic and it's something where it would be obvious to do in view of other things or if you know general designs or functionalities of that thing are out there you know your application may be rejected and you may not be able to overcome those rejections so that's the only downside with utility patent applications so the takeaway here is that designs can be covered by both design applications and by utility
Thanks Imogene your participation is very much appreciated
- Wilton Snyders
About the author
I've studied field theory at Bentley University in Waltham and I am an expert in virtue ethics. I usually feel giddy. My previous job was painters, construction and maintenance I held this position for 20 years, I love talking about radio-controlled model playing and walking. Huge fan of Susan Rice I practice dog sledding and collect antique.
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