United States: Design Patents - Don’t Let Your Prerelease Activities Bar Your Chances For A Design Patent

CONVENTION CENTER FLOOR - MAJOR CITY - MORNING

Flash bulbs popping, high-intensity music playing.  On the main rotating stage, the mockup of your new product comes into the spotlight.  Although your technology is not ready for prime time, you decide to showcase your forward-thinking design to build buzz in anticipation of the product's launch in six months.

ANNOUNCER

"Ladies and gentlemen, Acme Corp. is proud to announce it newest Product.  Look at that forward-thinking design!  In only six months, you could have your very own Product.  Step up close and check it out!"

FADE OUT.

LEGAL DEPARTMENT - JUST OVER ONE YEAR LATER

You launched the Product six months ago and it has been a grand success!  Despite your patent attorney's earlier recommendations, you are just now putting the finishing touches on your utility patent applications. 

PATENT COUNSEL

"Your customers have come to associate your innovative design with the Product.  Have you considered getting a design patent?"

HEAD OF IP

(Remembering that, in fact, there is word that your competitors will be introducing a "highly inspired" design of their own soon)
"Of course," you say, "we'd definitely like to protect the design." 

PATENT COUNSEL

(Almost as an afterthought . . .) "Remember that the one-year bar on public disclosure applies to design patents as well as utility patents.  Did you show this design in public more than a year ago?"

SOUND EFFECT:

Screeeeeecchhhhh . . . .

HEAD OF IP

You ask, "Does the trade show we had more than a year ago count as a 'public disclosure'?  We didn't use or demonstrate the product; it just sat there.  And what we showed at the conference was only a mockup, not a production model.  In fact, there was nothing inside the product at all; it was just the exterior shell.  And we didn't offer it for sale."  Of course, photographers took pictures of the design and put it on their websites.

PATENT COUNSEL

(With a frown)

"Unfortunately, yes, the trade show mockup counts as public disclosure of the design.  Since the disclosure was outside the one-year grace period, under most circumstances, that is considered a public disclosure under U.S. patent law.1  Better luck next time . . . ."

FADE OUT.

This scene may be all too common in the real world.  While design patents are different from utility patents in many important ways, both types of patents must still play by many of the same rules.  Those rules include the limited one-year grace period for public disclosures.  While the bounds of the new post-AIA grace period have not been completely clarified by the courts, some elements of the grace period are relatively settled. 

Public Disclosure of Patentable Designs

While disclosing a single image of a design (such as on a website or in a brochure) might not sink a later-filed design patent application, trade shows are particularly problematic because typically the public has had ready access to all parts of the design.  Moreover, in today's media environment, journalists, bloggers, and even conference organizers will likely post or tweet your design before you may have even put it on your own website.  Once the genie is out of the bottle, it is not possible to put it back in.

Other Events Also Count as "Public Disclosure"

Moreover, trade show attendees alone might not be the only concern when it comes to public disclosure.  Often, companies will disclose designs during usability studies or market or consumer testing.  In these cases, companies should use nondisclosure agreements whenever a prerelease design leaves the building, because these disclosures could be considered public.  If consumer testing allowed participants to take the product home, then it is important to consider that the design might be shown to other members of the household or neighbors and friends.  But despite these agreements, unauthorized disclosures may still occur.  The U.S. Patent and Trademark Office has considered unauthorized disclosures to be invalidating prior art in the past.2  So, you might be left with a contract remedy against these unauthorized disclosers, but your patent rights might not be so lucky.

Making deals with suppliers to make a product using your new design may also create problems.  In Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc.,3 the Federal Circuit considered a case in which a purchase agreement with a supplier was considered a "public sale," barring patentability because the "sale" took place more than a year before the filing date of the related patent.  In this 2013 case, the patent owner had worked with a supplier to build a commercial product that practiced the claims of the patent-in-suit more than one year before the priority date of the patent.4  The Federal Circuit found that such a transaction was a "commercial offer for sale" made by the supplier to the patent owner, triggering the on-sale bar.5  In finding no "supplier exception" to the on-sale bar, the Federal Circuit found it of "no consequence" that the offer for sale was made to the patent owner rather than by the patent owner.6  While Hamilton Beach involved a utility patent, this case still serves as a warning for designers who commission others to manufacture their products that embody a design before filing for patent rights.

All of these situations should strongly encourage those with innovative designs to protect their designs before any disclosure to the public, including to testing participants and to suppliers.

Disclosing Concept or Preproduction Designs May Also Create Other Issues

"But," you may say, "my design isn't even finalized yet.  So if I show a preproduction design or concept design that I plan to change for the production model, then I'm safe, right?"  It depends on two things.  The first concern is creating prior art that may cause you problems later when you try to protect the design of the production model.  In general, most design patent applicants are their own worst enemy when it comes to relevant prior art.  When a new design is an evolution or modification of an existing design, sometimes the patent examiner considers the new design to be an obvious variant of the earlier-generation design.  In the context of a trade show, you need to be sure that the design you are showing will be substantially different from the final design to avoid this situation. 

Another concern is that if you do not secure rights on your concept or preproduction design, then you would have fewer options if a competitor took this design and used it for its own product.

If you are not sure about the differences between your concept and your production design or want to guard against a competitor adopting the concept design, then the best course of action is to file design patent applications on both the concept/preproduction design and the production design.  As long as the earlier design application has not been published, then it should be possible to overcome the earlier prior art reference should it become an issue during prosecution of the later-filed design patent application.

Best Practice Going Forward

The best practice going forward is to file for patent rights before any disclosure that could be considered public.  It is that simple.

Footnotes

1 35 U.S.C. § 102(a)(1) (post-AIA) or 35 U.S.C. § 102(b) (pre-AIA).

2 Ex parte Ford Global Techs., LLC, No. 2010-004965 (B.P.A.I. June 3, 2010).

3 726 F.3d 1370 (Fed. Cir. 2013).

4 Id. at 1375.

5 Id.

6 Id.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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