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Protecting Designs Under Patent, Copyright and Trademark Law

Tracy P. Jong, Esq., Patent and Trademark Attorney
Cheng-Ning Jong, P.E., B.S., M.S., Registered Patent Agent


Course Outline

This two-hour course will focus primarily on design patents. The student will learn how to identify patentable designs and how to conduct free patent searches. You will learn the differences between design patents, utility patents, trademarks and copyright. You will learn how to prepare drawings for patent submittal and how the patent submittal and review process works.

This course includes a multiple choice quiz at the end, which is designed to enhance the understanding of the course materials.

Learning Objective

This course teaches the following specific knowledge and skills:


Intended Audience

This course is intended for engineers, corporate management and private practice.


Benefit to Attendees

Attendee for this course will learn how to identify patentable designs and how to conduct free patent searches. You will learn the differences between design patents, utility patents, trademarks and copyright. You will learn how to prepare drawings for patent submittal and how the patent submittal and review process works.


Course Introduction

Engineers design many things. Think for a moment about the popularity of certain designs for watches, automobiles, cell phones, home products, and consumer electronics which prove that marketing potential is a valuable asset. An engineer's professional work product enjoys several forms of protection under copyright laws, trademark laws, patent laws and state unfair competition laws. The extent of protection, and the applicable laws that may provide protection, vary depending upon the nature of what is designed.

Hardworking Company, Inc. invests significant resources in redesigning its water pump. Its successful line of water pumps has enjoyed a significant portion of the market share for more than a decade. This new design is more than just functional, it is esthetically pleasing. It combines clean design with a compelling color scheme. Preliminary sales results in the first month after product launch show that sales are up 40% over the monthly average of the previous year. Big Box Company reports that the new pumps are attracting customers. "They have a hi-tech look and feel." Hardworking Company, Inc wants to protect against competitors introducing a similar design that might be confusingly similar to customers.

Design patents protect a product manufacturer from "copycat" products where inferior quality detracts from the design patent owner's reputation in the marketplace.

"I have worked hard to develop a good reputation. Putting the products side by side, consumers might be confused as to which is mine. They might buy my competitor's product thinking it is mine. I want to prevent copycat devices from usurping my market share."

Design patents protect the overall appearance of an invention. Patent protection, in the form of a limited 14 year monopoly, may be granted for any new, original and ornamental design for an article of manufacture. Design patents will not protect the concept, just the appearance. Design patents are directed at protecting surface ornamentation, configuration of parts, shape of the article or a combination of these elements. Protection is granted for definite and reproducible designs with a pleasing aesthetic appearance that is not dictated by functional considerations.

We will be focusing our attention on non-functional design protection in this PDH course. However, it is worth reminding that novel, non-obvious functional designs may be afforded protection under Patent law with a utility patent. A utility patent protects the concept itself in the way of a functional structure of the article.

National Tool Company is introducing an "all in one" cordless power tool with interchangeable tool devices. The handle on all of its tool devices are immediately recognizable to customers as part of National Tool Company's product line. The quality and value of National Tool Company's products attracts customers by reputation alone.

Trademark law protects marks that indicate product origin to the buying public. Trade dress, in the form of product shape and design, may be afforded trademark protection when the design obtains a "secondary meaning" and acts as an indicia for consumer recognition of the product's source.

A closely related body of law to trademark is unfair competition law. Trade dress, including product design, may be afforded protection under these state law doctrines.

Lastly, Copyright law may provide protection in certain circumstances. Vessel hull designs are expressly afforded protection under a registration system. Additionally, the form of an architectural work that is constructed from copyrighted plans may be afforded protection.

Thus, there are many pearls in the ocean that an engineer may discover to protect his valuable intellectual property assets.

Course Content

In this lesson, you are required to download and study the following course content in MS Word format:

Protecting Designs Under Patent, Copyright and Trademark Law

Please click on the above underlined hypertext to view, download or print the document for your study. Because of the large file size, we recommend that you first save the file to your computer by right clicking the mouse and choosing "Save Target As ...", and then open the file in Adobe Acrobat Reader. If you still experience any difficulty in downloading or opening this file, you may need to close some applications or reboot your computer to free up some memory.


Course Summary

Design protection may be one of the tools in your technology protection toolbox that deserves a dusting off. Copyright and Trademark protection offer protection of design elements, packaging and trade dress that should be considered in your business strategy. Customers who are confused by a similarly looking article may mistakenly buy your competitor's product. A product design may acquire distinctiveness if its intrinsic nature serves to identify a particular source when "in the minds of the public, the primary significance…is to identify the source of the product rather than the product itself." . Design Patents can bolster trademark protection and protect a market share you develop.

If your article of manufacture has novel surface ornamentation or an esthetic, nonfunctional configuration of parts or shape, consider seeking a 14 year limited monopoly in the form of a design patent. Drawings depicting all sides of the article are easily prepared once you familiarize yourself with the Patent Office guidelines. Design Patents are a moderate expenditure and have no publication or maintenance fees. Owners of designs should consider securing design patent and copyright protection at the time of a product's introduction and to seek trademark protection once secondary meaning has attached to the product's trade dress. Design patents can offer protection before secondary meaning attaches, offering a 14 - year patent team while trademark protection can last as long as the trade dress enjoys continued use in commence. Additionally, the enforcement standards for design patents are stricter than for trademark enforcement. Copyright protection is only available where the design is separable from the useful article to which it is applied.

Quiz

Once you finish studying the above course content, you need to take a quiz to obtain the PDH credits.

Take a Quiz

DISCLAIMER: The materials contained in the online course are not intended as a representation or warranty on the part of PDH Center or any other person/organization named herein. The materials are for general information only. They are not a substitute for competent professional advice. Application of this information to a specific project should be reviewed by a registered architect and/or professional engineer/surveyor. Anyone making use of the information set forth herein does so at their own risk and assumes any and all resulting liability arising therefrom.