While many in the Fashion Industry intellectually understand that Design Patents protect unique fashion designs (e.g. for clothing and accessories), they nevertheless seem to prefer Intellectual Property protection based on copyright, trademark, and trade dress, leaving Design Patents underutilized. This is because, like Urban Myths, there lingers in some corners of the Fashion Industry three outdated beliefs about Design Patents, i.e.: (i) Design Patent applications take so long to process they aren’t useful by the time they issue; (ii) Design Patents are expensive; and (iii) Design Patents are difficult to enforce. This blog note will demonstrate why the three (3) preceding beliefs are no longer true, state three (3) up-to-date beliefs that are true, and end by encouraging use of Design Patents.
Here are three up-to-date truths about Design Patents:
(1) Design Patents are often quickly obtainable
While Utility Patents usually take two, three or more years to be obtained, Design Patents can be obtained relatively quickly. Indeed, for the last two years, over half of Design Patent applications issued as Design Patents within one year of the application filing date. What’s more, techniques exist which enable knowledgeable patent counsel to have some Design Patent applications allowed more quickly than average.
(2) Design Patents are relatively inexpensive, and can be quite cost-effective
The average initial cost of preparing and filing a simple Design Patent is estimated to be between two and five thousand dollars (depending on design complexity); this is inexpensive relative to many common necessary business expenditures. While the investment in a Design Patent may not be warranted for every item, a consultation with qualified Patent Counsel will show that a Design Patent application is a worthwhile investment for many, if not all, items. And once the investment is made, and a Design Patent has been obtained, no further payments are necessary; unlike Utility Patents, Design Patents don’t require periodic payment post-issuance “maintenance fees” to remain in effect.
(3) Design Patents are straightforwardly enforceable. (‘Now more than ever’).
In the not-so-distant past (before 2008’s “Egyptian Goddess” decision) (Egyptian Goddess, Inc. v. Swisa, Inc., (Fed. Cir. 2008), proving Design Patent Infringement was more difficult than it is today. Suffice it to say that, nowadays, proving Design Patent Infringement essentially requires only proving that the two designs (i.e. the design covered by the Design Patent and the design accused of infringing the Design Patent), taken as a whole, are substantially similar such that an ordinary observer (e.g., the consumer) would be deceived to purchase one design believing it to be the other. Thus, nowadays, an issued Design Patent is less of an abstract threat, and more of a practical deterrent to would-be copiers, than it was in the not-so-distant past. (Indeed, even before the Design Patent issues, merely applying for it enables one to mark items as “Patent Pending”; this marking alone has a deterrent effect on would-becopiers).
Future blog posts will further elaborate on the advantages provided by Design Patents. For now, however, the author trusts that this post has achieved its goal of convincing the reader that: (1) Design Patents are often quickly obtainable; (2) Design Patents are relatively inexpensive, and can be quite cost-effective; and (3) Design Patents are straightforwardly enforceable, and deter others from copying, thereby preventing the holder of the Design Patent from losing revenue to those who would have engaged in copying but for the existence of the Design Patent. Thus, Design Patents increase the bottom line of their owners.
Joseph F. Murphy, Jr. is currently a Registered Patent Attorney, and Chairs the Fashion Law Subcommittee of the New York County Lawyers Association (NYCLA). He is a 1992 graduate of the IP-focused Franklin Pierce Law Center, which has since become the Law School of the University of New Hampshire. He is a 1987 graduate of Marquette University, where he obtained a B.S. in Electrical Engineering. His past academic work includes guest lecturing on Fashion Law at the Fashion Institute of Technology, and teaching “Valuation of Intellectual Property” at NYU as an adjunct Professor. He is the Legal Editor at www.fashionlawcenter.com ; his law practice is described at www.joemurphy.com.