Using design patents to protect your products in the United States. OAKLEY v. ILUMEN8

Using design patents to protect your products in the United States. OAKLEY v. ILUMEN8

United States patent law allows an inventor to apply for a design patent for any new and non-obvious ornamental design for an article of manufacture.  The language “new, original and ornamental design for an article of manufacture” set forth in 35 U.S.C. 171 has been interpreted by the case law to include at least three kinds of designs (A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia); (B) a design for the shape or configuration of an article of manufacture; and (C) a combination of the first two categories.

A design patent only protects the appearance of an article, but not its structural or functional features. A utility patent would be the appropriate way to protect the structure or function of an invention.  A picture standing alone is not patentable under 35 U.S.C. 171.  This means that an inventor could get a design patent on a lamp with an ornamental base, but the design patent would not prevent other people from selling lamps.  The design patent would also not prevent other people from selling the ornamental base separate from a lamp.

Design patents can be thought of as a hybrid of patent law and copyright law, but it is important to remember that design patents are a separate and distinct branch of intellectual property law.  The laws that apply to utility patents and copyrights are not directly applicable to design patents.

An inventor can apply for a design patent by filing an application with the United States Patent and Trademark Office.  The specification of a design patent application is short and ordinarily follows a set form. Only one claim is permitted, following a set form that refers to the drawings that depict the design. The United States Patent and Trademark Office will examine the design patent in a similar way as a utility patent.  If the examination determines that an applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. The drawing of the design patent conforms to the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope of patent protection.

The test for design patent infringement is articulated in Egyptian Goddess Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008).  In that case the Court of Appeals for the Federal Circuit held that infringement of a design patent occurs when an ordinary observer concludes that the accused design and patented design are substantially the same in light of the prior art.  The substantially similar test for design patent infringement was first articulated by the United States Supreme Court more than a century ago in  Gorham Co. v. White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed. 731 (1871).

An example of a company using design patents to protect the look of their products is OAKLEY, INC., v. THIRD COAST PRODUCTS, LLC d/b/a ILUMEN8, 19-cv-00276 (N.D.IL 2018).  Oakely is a manufacturer of eye wear that is both fashionable and useful.  Oakley is the owner of  United States Design Patent No. D659,180 (the “D180 Patent”), titled “Eyeglass.”  The 180 patent depicts a design of eye wear which is reproduced above.

The defendant in this case sells safety glasses to protect the wearer’s eyes from flying objects and UV light.  Oakley alleges that the design of the defendant’s safety glasses infringe on the 180 patent.

The design patent and the defendant’s products seem similar, but the case is not over yet.  The defendant will have  a chance to answer the complaint and Oakley will still have to convince a jury that the defendants products infringe on the 180 patent.

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