Can I patent a new shape of an existing product?

There are two main options to explore for patent protection on the shape of an object: a utility patent application or a design patent application.

Utility Patent Application

As we’ve discussed in a previous blog post, a non-provisional utility patent application has claims that may issue into a patent on your invention. We’ll skip over the provisional utility application, because it’s usually a description without claims.

Whenever a utility patent application relies on change in shape, I tend to expect an initial rejection from the patent examiner at the USPTO. For example, the examiner usually cites In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).

The patent attorney shorthand analysis is that a mere shape change is a design choice. The qualifier “mere” means that there is a shape change with nothing more regarding patentability. This type of rejection can often be overcome by showing that the shape change has a functional benefit so that the examiner will consider the claimed shape as a structural element of the invention.

Design Patent Application

Rather than protecting the way your invention is used and works (the functional features), a design patent protects the way an article looks (the ornamental features). The protectable appearance can include the invention’s shape and configuration and/or surface ornamentation. A simplified way of thinking about what is protected is by imagining a shadow cast by the item you have created. The ornamental shape of the shadow may be protectable by design patent.

Imagine that you obtain a design patent for a new and useful tool – only the ornamental design would be protected! Thus, you could only stop your competitors from using your design, whereas these companies are free create a new design for the functional aspects of your invention.

Utility or Design

In light of these issues, a utility application is most often chosen for protection of functional structures. However, a design application can be used if the design itself is the intended invention. The third option is to file both – if the invention may be a mere shape change in the eyes of an examiner reviewing a utility application, you may still have a protected design. When filing both applications together, other issues can arise that may prevent grant of either type of patent. These issues will be discussed in an upcoming post soon!

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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