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Protection in the USA Q&A
What protection does an American design patent offer?
As in Canada, an American design patent protects only the ornamental aspects of the article that are not mere manifestations of the article's function. The ornamental design aspects that the applicant seeks to protect must be original and novel. The protection afforded by a design patent lasts fourteen years and allows the owner to enforce exclusive rights to the design. An injunction to prevent anyone else from exploiting the design, and damages are available remedies.
What is the procedure and cost for obtaining a design patent?
To acquire design patent protection, the applicant must file an application with the United States Patent Office within one year of the first public use, sale or offer for sale of any article embodying the design. The application must be accompanied by formal drawings of the design and the statutory fees paid. If the applicant prefers to file black and white photographs rather than formal drawings, the applicant may file a petition (and an additional fee) with the U.S. Patent Office requesting that it accept photographs instead. Unlike utility patents protecting an article's functionality, design patents do not require the filing of additional maintenance fees from time to time throughout their lifetime. If the applicant is an individual or a business that employs 500 persons or less, it may qualify for "small entity status" and obtain a 50% reduction on the applicable Government fees. The overall expense tends to be in the same ballpark as the expense of a Canadian industrial design registration, as discussed above. We are registered to practise before the U.S. Patent and Trademark Office and can arrange the preparation and filing of a U.S. design patent application.
Are there any other ways of protecting an industrial design in the U.S.?
Anyone interested in acquiring U.S. protection for a design should also consider applying to register a copyright in the design, which, if available, subsists for the term of the author's life plus fifty years. In contrast to Canada, American copyright protection can cover mass-produced articles of manufacture, as long as the article in question fulfills the originality requirement. Although copyright protection exists from the moment the design is affixed to a tangible medium, a copyright holder is prevented from enforcing rights to the full extent of the law unless the copyright is registered. That is, even though a copyright owner who is a national of a Berne Convention country (such as Canada) may commence a legal action against an infringer without first registering the copyright, the owner cannot claim statutory damages or attorneys' fees (both of which can add up to a substantial amount) unless the copyright is registered. Furthermore, if a copyright is registered before or within five years of the first publication of the design, the registration gives rise to a presumption that the copyright is valid. This gives the copyright holder a strategic advantage, such that if the copyright holder brings a lawsuit against a party infringing the copyright, the infringer bears the burden to prove that the copyright is not valid. The cost of preparing and filing a copyright application and payment of the U.S. Government filing fee is typically less than $2,000, with most applications at or near the lower end of the range. Given the low cost and the benefits of registering copyright in a design, it is often worthwhile to obtain U.S. copyright registration as a complement to a U.S. design patent. We can arrange the preparation and filing of a U.S. copyright application.
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