Let’s assume you created a product with a striking new physical design. It’s sleek, it looks good, it’s ergonomically easier to use and the design is unique and distinctive. In fact, you’re thinking of applying this sort of design to several of your products. Can you protect that design? Let’s look at that.
Four Types of Intellectual Property
There are four types of intellectual property which may be available to help protect your design. There is patent protection (known as utility patent protection in the United States), there is Industrial Design Protection (known as design patent protection in the United States), the is Trademark protection (also called trade dress, distinguishing guise or design mark protection) and, in some cases, Copyright might also be available to help protect your design. Let’s look at each of these.
Let’s start off by looking at patent protection. Again, in the United States this is called a Utility patent, while here in Canada, we just call it a patent. The functional aspects of a 3D design can be protected if the design is new and inventive (the design is not obvious). Only the functional aspects of the design can be protected in this way, not the decorative or ornamental aspects of the design. Hence, if your design has ergonomic features making it easier to use, then those ergonomic features might be patentable. If the three-dimensional design of your product has some other functional features which make the product easier to use, less expensive to manufacture or otherwise improves the products performance, then that three-dimensional design might be patentable.
Patents have certain advantages and disadvantages over other forms of intellectual property protection. Firstly, patents have a relatively long lifespan of 20 years. Patents also give the patent owner very broad protection. Competitors will have a difficult time avoiding your patent by making minor changes or modifications to your design provided the key elements of your design are copied. Unfortunately, patents are not always easy to get. They take a long time to process and the costs can be high, especially if international protection is sought. Overall, patents provide a good balance of protection, provided the design has functional elements worth protecting.
Industrial designs (design patents) are specifically tailored to protect the three-dimensional and aesthetic elements of a products design. As mentioned above, patents only protect the functional aspects of the design, not the decorative and aesthetic elements of the design. Industrial designs are exactly opposite and protect only the decorative and aesthetic elements of the design and not the functional aspects of the design. Most products designed for consumer purchase have aesthetic and decorative features specifically created to make the product look good. Those features, if they are new, can be protected with an industrial design registration. Only new designs can be protected, so if you’re product has been publicly disclosed or on the market for move than a year it is too late to try to get this form of intellectual property protection.
An industrial design registration has several key advantages. They are relatively easy and quick to get, and their cost is relatively low compared to patent protection. They only last for 10 years after registration, and the protection afforded by them is relatively narrow. It is possible to get around an industrial design registration by producing the product using a different three-dimensional design. The extent to which the design can be copied is not always easy to determine beforehand, and that ambiguity can add to the industrial designs usefulness in discouraging competitors from copying the design.
It’s important to realize that both patent and industrial design protection can exist simultaneously in a product. Typically, a patent can be used to protect the functional aspects of a design while a industrial design registration can be used to protect the non-functional aspects of that design. When used together, the two types of patent protection can give the owner good protection.
It might surprise many people to learn that the three-dimensional shape of a product can be protected as a registered trademark. A good example of a three-dimensional trademark is the shape of the Coca-Cola bottle, which the Coca-Cola registered decades ago. Only the distinctive features of the design, not the decorative or functional aspects of the design are protected by the registration. The distinctive features of the design are those features which are non-functional and which are unique to that product produced by that owner. Hence, the Coca-Cola trademark for the shape of the bottle protects only those design features which help purchasers identify the bottle as being a bottle of Coca-Cola. This type of trademark is often used for bottles, jars, boxes or other types of packaging; although, it can be used for any product whose three-dimensional shape is distinguishing.
Trademark registration has some key advantages. Firstly, it has an indefinite lifespan. If the product remains in use and the maintenance fees are paid, the registration remains in force. Also, the protection is broad since it protects against designs which are merely confusing, not identical. The costs, while higher than standard trademark registrations, are lower than patent protection. Unfortunately, to be registrable the design must be distinguishing, so the product must be in the market for a period of time. Also, it is possible to lose the trademark registration if the trademark goes unused for a period (usually 3 years). It is also possible for a design to be protected by trademark and by patent and industrial design as well. Indeed, many products are protected by both industrial designs and trademark registrations.
Products of an artistic nature may be protected by copyright protection. Given the fact that most products are created for wide spread commercial sale rather than artistic purposes, it’s unlikely that the three-dimensional design of a product will qualify for copyright protection. However; some artistic aspects of the design may be subject to copyright protection. Graphic elements applied to the design can be protected by copyright. For example, if the design incorporates graphics, pictures, icons, or other similar elements, then those elements can be protected by copyright. Again, if the design elements are functional, then they cannot be protected by copyright, but this is not always the case. The design of a circuit board, for example, is something which has a clear functional purpose, but has been found to be protected by copyright. Theoretically, parts of the design might be protectable by copyright in the same way as a statue or figurine.
Copyright has the advantage of being very long living (life of the artist plus 50 years) and very inexpensive to register. It is very narrow protection, which is its major drawback. Actual copying must take place for copyright infringement to occur.
The three-dimensional aspects of your design can be protected by various forms of intellectual property. If the design is new, distinctive and inventive, then multiple forms of intellectual property can co-exist in the same design.