We previously left off with two options for patenting shape change inventions. For example, shape changes may be patented with utility-level protection for functional structures of the shape change or with design-level protection for aesthetic structures of the shape change. However, for companies that want maximum protection of both the function and aesthetics of the shape change, it is recommended to file both types of applications. Furthermore, companies may want to hedge their bets with aesthetic protection as a backup, in the event that utility protection doesn’t pan out.
Note that a patent application is reviewed by an examiner and often meets an initial rejection. The examiner will consider arguments in response to this initial rejection. These initial rejections, when dealing with inventions claiming shape changes, often argue that the claims are drawn to a “mere shape change,” with nothing more. Examiners typically won’t allow patents on mere shape changes, because such alterations in arrangement are typically considered obvious variants of pre-existing products. These arguments may be overcome by pointing out the functional aspects or benefits of the claimed arrangement.
Furthermore, consider that a patent examiner will not allow a design patent to protect functional aspects in a design. Therefore, the inventor may have to argue that the structure is merely aesthetic. As such, filing the utility patent application on a shape change seems to claims that the shape change is functional, whereas filing the design patent application seems to claim that the shape change is aesthetic. These interests seem diametrically opposed.
To throw another wrench in the works, arguments made in one application can hamper the patentability of related applications, when the arguments include statements that affect patentability (such as whether a structure is functional or aesthetic).
How should an inventor proceed with applying for both utility and design patent protection to avoid losing protection for both?
The description of the invention in the utility application must be worded very carefully. For example, all functional language should be permissive – using the words “may be” rather than “is.” Additionally, the description and any arguments in response to the examiner should be drawn to aspects of the structure rather than the entire structure itself. As a further example, a structure has a surface that can contain ornamentation, whereas the structure itself may be functional. Even better, aspects of the shape change may be functional and yet other arrangements may exist for the function, making the particular shape in the design patent application an aesthetic choice.
Applications for both utility and design patents on a shape change are possible, when a high degree of creativity is used to describe the various aspects of the invention.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
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law