Something to Chew On

By Elaine M. Ramesh In , Posted 

Intellectual property is a field of law that can provide many different types of protection for an entrepreneur's product.   Utility patents are the most commonly used type of patent, and this type of patent protection is chosen when the aim is to claim the useful and functional features of an invention.    But the visual appeal of a product can also be protected, with use of a design patent.   According to MPEP 1504, the inventive novelty or unobviousness resides in the ornamental shape or configuration of the article in which the design is embodied or the surface orientation which is applied to or embodied in the design.  Novelty and nonobviousness are to be determined by an Examiner's search of the art.

Design patents protect the ornamental features of an item, and have the advantages of 1) a relatively short time from application to issuance; 2) relatively inexpensive to prepare and prosecute; 3) no maintenance fees; and 4) lower likelihood of post-grant challenges.  Yet design patents do not qualify for either Patent Term Adjustment or Patent Term Extension.

Design patents formerly all had a fourteen year lifespan, but for those filed after May 13, 2015, the patent will have a fifteen year term from issuance.  This is because of a legislative change for enactment of the U.S. Patent  Treaties Implementation Act of 2012.   After passage of the law, the U.S. became a member of the Hague Agreement (an international treaty that establishes procedures for design patents). 

Let's take a look at a design patent for a cute dog chew treat - the BAR-B-CHEW COB BONE. The BAR-B-CHEW COB BONE is a Nylabone product.  The company is well-known to pet owners.   Perhaps less well-known is that Nylabone's parent company is T.H.F. Publications of New Jersey, a publishing leader of books for dogs and small animal care.   By the way, a quick scan of my own home bookshelf turned up two books by this publisher, one on Dalmatians and one on Bettas.  T.H.F. Publications is wholly owned by Central Garden & Pet Co.

 The visual appeal of this product is protected by design patent D569,077.   The patent has seven figures and one claim.  Design patents do have only one claim, which makes claim drafting a relatively simple matter.   The figures show what is claimed in solid lines.   Although this patent does not include them, the figures may have broken lines to define the boundaries of an item.  Since this patent was filed prior to the change in the law, its term is fourteen years and it will expire in 2022.

The BAR-B-CHEW COB BONE  has bristles which will help clean teeth and prevent tartar build-up.   The soft chewy ends help massage the dog's gums and the durable middle helps clean teeth.   Such functional features and advantages of the bristles are eligible for protection with a companion utility patent application.

As you can see, a design patent may be a cost-effective way to protect aspects of your product.   The Flener IP Law attorneys are ready to advise you if you are considering design patent protection.