By Laura Levin and Maysa Razavi
This guide is to help fashion designers understand what is a design patent can protect and what is patentable in fashion.
As a preliminary matter, you might be wondering if you are required to have a patent attorney file a design patent application. And the answer is no, you’re not. However, it would be wise to hire a patent attorney to help ensure that you receive the full range of protection possible for your design patent once it is issued. It might be pricey, but definitely worth it.
A design patent protects ornamental designs, which are the design elements that are separable from the useful object. It could include the shape or configuration, as long as it is not a useful aspect of the design. Design patents are very helpful in protecting the intellectual property of things like shoes, handbags, and jewelry (like watches). The design patent is ideal for these forms of fashion since the patents applications can take up to a year for the US Patent and Trademark Office to approve and grant. Patent protection for design patents last fourteen years from the date of issue of the patent application. More ephemeral forms of fashion like clothing change every season, so applying for design patents might not be the best form of intellectual property protection. Things like handbags and shoes can be classic staples of a fashion house that appear in collections for years.
Stuart Weitzman has many design patents in his shoe designs:
This shoe itself, meaning the heal, the sole and the strap, is not patented, but the design is.
Here’s a handbag design that was invented by Marc Jacobs for Louis Vuitton:
This patent highlights the fact the inventor – the designer in fashion (Marc Jacobs in this case) – must be listed as the inventor and then assign their design to the fashion house (Louis Vuitton as the assignee in this case). A fashion house cannot patent the design as their own as they can in the case of trademarks and copyrights.
Useful items are patented under a utility patent, and these items must be novel in order to be patentable under a utility patent. Besides the useful aspect of utility patents, the biggest difference is that the protection of a utility patent lies in the claims rather than in the drawing of the design patent as seen below. The other major difference is that utility patent protection lasts twenty years from the filing date, whereas design patent protection is only fourteen years from the date of issue. Utility patents are not common in fashion since most of the useful objects are based on forms that are well known and cannot meet the novelty requirement of a utility patent. Utility patents are in fashion are usually used when new processes are developed in manufacture or new fabrics or fasteners are developed. For example, baseball caps often have utility patent for the way they fit heads: Design patents like all patents must be novel. To get the patent, your design must not be like any designs from the past (called prior art in patent terms). Another big factor is that the design that is being patented cannot be public for a year before you apply for the patent. That’s why many people apply for a patent before they put their design on the market and write patent pending on their product with the application number.
Why patent a design if the protection will last only fourteen years and the application takes about a year to be granted patent protection? In talking to most fashion lawyers, a patent is “slam dunk” in intellectual property protection. Putting the patent number on the bottom of a shoe or on the inside of the handbag tells the rest of the world to beware infringing. Even the patent pending should worry potential infringer. Once the patent has been approved the US Patent and Trademark Office, then the designer can go back and sue for damages of past infringers of the design.
The most important element of a design patent application itself is the drawing disclosure, which represents the overall visual appearance of the design (much like the claims of a utility patent application describes the invention). It is crucial that the drawings be of the highest quality (and conform to various other specific standards). Thus, the USPTO suggests hiring a professional draftsperson to help here. Otherwise, a poorly executed drawing could result in the USPTO considering the drawing to be a “fatal defective” disclosure, which precludes the issuance of a patent. As for the rest of the application, there is no one format required, not are there any easy fill-in-the-blank forms available. The application just must contain all of the necessary elements for an examiner’s review. Those elements are: (1) Preamble; (2) Description of the figure(s) of the drawing; (3) Feature description; (4) A single claim; (5) Drawings or photographs; and (6) Executed oath or declaration. For further details on these elements and what to include in each, see http://www.uspto.gov/web/offices/pac/design/definition.html#elements.
Turning back to the application process, once the USPTO receives the completed application with all of its necessary elements and appropriate filing fee (which, for a basic design patent application is currently $220), it will assign the application with an Application Number and Filing Date, both of which are then sent to the applicant in a Filing Receipt. It is very important to keep the Filing Receipt for your records because you will need your Application Number and Filing Date to communicate with the USPTO regarding your application throughout the process. Next, the application is on its way to the all important examination phase.
During examination, the application is reviewed for compliance with process formalities and, just like a utility patent application, to compare the subject matter with prior art in the field (for a good explanation on what prior art means and what exactly qualifies as prior art, see http://www.iusmentis.com/patents/priorart/). After examination, the application will either be allowed, and the applicant will receive further instructions on how to complete to design patent issuance, or the application will be rejected. However, rejection does not mean that all hope is lost for your design patent. If the examiner rejects the application, it would then issue an Office action in which describing the reasons for the rejection (for example, maybe that there is overlap with prior art or the drawing disclosure is incomprehensible). Sometimes, the Office action will contain suggestions for amendments to the application. After receiving the Office action, you may reply in writing to request reconsideration, and may include any proposed amendments to the application. The reply process has rather stringent demands, mainly that the reply must “distinctly and specifically point out the supposed errors in the Office action and must address every objection and/or rejection in the action” (uspto.gov). If the reply does not meet all of the requirements set by the application’s initial examiner, it must provide an argument as to why compliance should not be required. During the reply process, you must pay particular attention to the deadlines laid out in the Office action because failure to meet these deadlines could result in the application being considered abandoned.
As a general matter, the USPTO suggests that the following items should appear on any communication with the Office:
- 1. Application number
- 2. Group art number
- 3. Filing date
- 4. Name of the examiner who prepared the most recent Office action
- 5. Title of invention
Once the reply is received, the application will be reconsidered, taking into considering the applicant’s remarks and any proposed amendments included in the rely. If the examiner is satisfied with the remarks and amendments, it will withdraw the rejection. If the examiner is not satisfied, it will repeat the rejection. In this case, you may file an appeal with the Board of Patent Appeals and Interferences, perhaps another guide for another time!