The Patents are an important part of the business since it helps the inventor to protect the subject matter of the invention. But it is more or less equally important for the invention to protect the way something looks like. For the protection of the same, the design patents offer a strong complement to utility patent coverage and help prevent copycats and substantially similar products from entering the marketplace.
In India, features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two dimensional or three dimensional or in both forms, can be registered under the (Indian) Designs Act, 2000. In this part, we will see how Design Patent can be useful in the US.
Design patent forms an important part of a company's IP strategy and forms a strong tool in businesses like in the fashion industry, device manufacturing, technology, etc. Its importance increases as and when the distinctive feature of the look becomes the face of the product and the consumers relate the same with the origin. Some products that are prime candidates for design patent protection include graphical user interfaces (GUI), Smartphone apps, electronics, automotive products, building products, textiles, furnishings and furniture, designer goods, household items, and more.
In an important decision by the United States Court of Appeals for the Federal Circuit in Egyptian Goddess v. Swisa, the test for the infringement was significantly changed putting up with the ordinary observer test. This test has significantly changed the ambit of proving the infringement with regards to the design patent.
The court while delving into the case of design often checks the novelty of the design. This test further simplifies proving the design infringement, making it simpler. The test simply compares the infringing product with that of the design patent and concludes whether there is an infringement or not. This test simply puts the onus towards the drawing of the product, demonstrating whether the infringing product has copied the design patent or not.
Having s simpler test, as specified above, getting a temporary restraining order (TRO) becomes easier. This has become more useful in cases where a design is being exhibited in the trade show. The TRO might not be attained for utility patent since for this an effective infringement of the subject matter needs to be proved. But for the case of design, it is simple to just comparing it with the other design as per the test above.
In few cases, there are chances that the functionality and the design are not easily separated. In such cases, it is imperative to think of getting both a utility patent (to protect function and internal mechanical structure) and a design patent (to protect the way the article visually presents). Also, in the US, the design patent may be awarded in a few six to nine months. Strategically, getting protection through a design patent can be satisfactory, seeing the period which it takes for being awarded.