As artists and designers, our work is very visual. A designer puts her work as a silk screen on T-shirts and sells them to make a living. Someone comes out with a new shape to a shoe, a new configuration to a cabinet, a new look to a car, or a painting, rug, or sculpture. Perhaps someone is making music and wants to protect their ideas. How do we go about protecting what is rightfully ours? In this age when images and products are either being appropriated outright or stolen quietly (something we call piracy), what safeguards are there for such new works that represent new thinking, new ideas, and the hard work of millions?
In the United States there are four main ways to protect your ideas and designs.
First, there are patents. These fall into three broad categories:
- Plant Patents
Next are Trademarks ® and Copyrights ©. The final way to protect work is through trade secrets. These will be discussed a little later in this blog entry.
Patents are registered with the U.S. patent office and are good for twenty years. This allows the creator the time needed to profit from the idea before its being opened up to the broader market of makers and manufacturers and designers. While it’s a protection, it is limited since the patent office’s other purpose is to help people retrieve information about expired patents so they may learn how to reproduce the idea. One role the patent office serves is that of educator, helping to disseminate accurate information for those wishing to review older patent applications.
Utility patents are applied for to help protect useful processes, machines, manufactured articles, and compositions of matter. Some examples: medications, computer chips, and fiber optic cable.
Design patents guard the unauthorized use of new, original, and ornamental designs for articles of manufacture. How a shirt looks, the design of a piece of blown glass, pottery, furniture, the design of a shoe, or even the characters in a children’s t.v. show can all be protected under a design patent.
Plant patents are the way we protect invented or discovered, asexually reproduced plant types. There has been an explosion of these lately with court rulings allowing companies to patent certain genes. More traditional examples of this are Burpee seeds that are hybrids like the “Beefsteak” tomato. All of these are protected under plant patents.
Trademarks are another form of intellectual property protection. Examples of this type of protection would be the “swoosh” developed by Nike, and the shape of the Coke bottle. These can be symbols, logos, words, or even sounds, that help to distinguish a company or its product in the public eye. Unlike patents, trademarks can be renewed forever.
Copyrights protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last the life of the author plus 50 years. Movies, screen plays, and music are all examples of copyright protection.
Finally, there are trade secrets. Some examples of these are the recipes for Coke and for Kentucky Fried Chicken. These are not protections made by any government agency but by the business itself.
Since my area of interest is in art and design, I will be looking more closely at the Design Patent since it will in most cases be the one application that most artists and designers will be concerned with.
The Design Patent Process. There is a process for applying for a patent, and in order for the office to work with you certain basics have to be observed. Before embarking on such an effort, it would be important to hire a patent attorney so that they may guide you in setting up the best protections built into your application. While the patent office does not require legal representation, it’s always been advised that you do so. The application begins with something called a “drawing disclosure” which is a set of drawings or photographs that describe in a complete manner all aspects of the design that are relevant. A furniture designer would include all scale drawings for the manufacture of their drawers, pulls, how glass or panels are installed; essentially all aspects of he making of the object in order that these details can be plainly understood by the patent examiner to make sure that there is not a current patent that already exists that covers the same design. The patent office describes this part of the process in this way:
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 (35 U.S.C. 132). It is in 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 Patent and Trademark 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.
There is an entire process for applications that are incomplete, or are denied or rejected for noncompliance to patent office standards. Its a rather daunting task, but each step is there to make the process one where the patent officials can quickly and speedily process your application.
It’s important to know the requirements of a design patent over a utility patent. The patent office distinguishes these two forms this way in their description of the two:
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). 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 patent must be comprised of those elements in the work (also called “The Art” in the application) that impact the appearance of the object or item being patented. If the appearance of the object is secondary to its use or function, the application can be denied, so being able to differentiate how an object is used as opposed to those elements that serve to be of a decorative or artistic nature need to be well understood. While a car may have an engine that has numerous patents applying to it, it is how the car looks that is served by its design patent. If a door handle on the car has a specific appearance that is not tied to its utility, then it can be protected by a design patent. The patent office also includes that anything that can be deemed offensive to any race, religion, sex, ethnic group or nationality, is not considered for design patents. This provision certainly suggests a degree of interpretation, and this is where an experienced patent attorney can be of some assistance.
A design patent will contain the following elements as standard:
|(1)||Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied;|
|(2)||Description of the figure(s) of the drawing;|
|(4)||A single claim;|
|(5)||Drawings or photographs;|
|(6)||Executed oath or declaration.|
While it is beyond the scope of this blog to go into each of these elements, they are included in order that you can become familiar with those most basic portions of the process. The fee for filing such an application depends on whether you or your company is of sufficient size to warrant a standard design application fee or the opportunity to have this fee reduced by half if you can prove that you are a small entity. There is an application for this that has to be filed along with the application. At every step of the way, there are applications that must be made if you are going to, for example, include photographs as opposed to drawings. These photographs have to be printed on the correct weight paper, and they each have to be identified in the proper way so they can be referenced accurately within the application!
For more information on the process and what is required you can go to the patent office website to find out more. The link to the design patent location is here.
The fee schedule for all patent applications can be found here. The cost for a patent search, which is just the portion of the application that makes sure there is no one else with the same kind of patent that is current is $60.00 for a small entity and double that for a larger entity. The design patent examination itself currently costs $60.00 for a small entity, and again, is double that for a larger company. There are other fees associated to the proper application for patent and it is a good idea to familiarize yourself with them and decide if patenting your idea is what you would like to do.
The single best way to keep fees down is to make sure that your application is completed with as few errors as possible. If you have educated yourself and are willing to do the patent application on your own, taking the time to go through all of the requirements and making sure they all conform properly will save you headaches later on down the line. It can also keep your patent application running smoothly through the patent office, cutting down on the time that it takes to process it. Asking for a “rush” on your application, for example, will cost you in excess of $2,000.00. Learning how to best prepare for a process such as this can save you later. As a final word of caution, be careful about letting a company that helps people get patents. It has been the experience of the patent office that while some are reputable, some are not. Some may have a contract that serves to reduce, not enhance, your rights under the patent. They might not take a fee, but instead have provisions that make them a defacto partner in the making and marketing of your design. It’s always advisable to read the small print, and even then, better to hire a patent attorney who understands current law as it related to Intellectual Property (IP) issues.
For an up to date listing of attorneys in your area who are currently able to present patent applications to the Patent Office, go here. As you will see, you can view by state or by zip code. The zip code list is the most up to date (its updated daily). I would suggest getting references for these attorneys so that you can decide which one is right for you. Having someone familiar with the design application as opposed to a utility application could result in fewer hang ups or problems later on down the line.
As a final little zinger and reminder about how important it is for the customer to be educated and prepared…..a number of years ago I was involved in work with a CPA who was part of a prestigious firm in my area. His services were used for a number of basic tax and accounting issues. When the business entity shifted gears and we chose to keep him on without my looking deeper into his credentials, we later suffered a big upset when he interpreted the law in such a way that it doubled our tax burden! He was a well intended professional, but he was out of his league on this one issue, and it caused a great deal of problems until it was corrected. I had assumed he knew the law because even I knew how the law was interpreted by the vast majority of accountants in this area of expertise. While it is not always possible for you to know ahead of time WHAT the law is, having already familiarized yourself with the basics can help YOU in choosing the person who will be right for the job. If you go into this process not knowing the right questions to ask, you could easily miss an important question to ask the person who will be serving you. While you can make an argument for the professional needing to know his or her area of expertise, the bottom line is not doing so and having it result in a hang up is still a hang up or unpassed hurdle. By being somewhat prepared, you can go into this process with eyes more open. I hope that I have included some resources for you that will help you to familiarize yourself with the design patent process in your journey towards protecting your designs!
Prior to having a patent in place, having very good forms of documentation of the existence of your work as a copyrighted entity can also be of some help. Doing this though means sending yourself images of your work via certified mail and then keeping this envelope unopened and on file should any need to take action arise. Other forms of this could be printed materials with your designs clearly printed on them along with a date of some kind, establishing when you were making these. While not as good as a patent, it can provide some measure of protection especially if you have a patent application pending or the case is a clear one involving stealing your designs. Sadly, with the advent of optical scanners, someone can take a sculpture, scan it, and actually reproduce it using rapid prototyping technology. While still developing, the technology already is causing some concern over intellectual property rights. When I look on web sites and see so many images of others’ work being appropriated for a personal web site’s content, I have to wonder how far adrift we have gotten where we do not think about an image possibly being the work of another person, or seeking to provide attribution. When I was in school, I could be kicked out for plagiarizing another’s work by not providing proper attribution! Awareness is key, and then having the reverence to understand the work that went into making that item and NOT copying it but instead getting the artist to whom it belongs to provide you with their OWN work!