To Design Or Not To Design – Frank Sardone’s Brief Overview Of Patents

frank-sardone.jpg

As members of the toy and game industry or community, you understand that the success of a new toy or game may depend on its unique aesthetic design.  You also understand the importance of gaining intellectual property protection over a new toy or game.  What you may not be aware of is the benefits that can be derived from filing for and receiving a traditional Design Patent from the United States Patent and Trademark Office (USPTO), or a soon to be implemented International Design Patent pursuant to the Hague Agreement Concerning Implementation of Industrial Design (Hague Agreement).  This article will discuss the protection and cost advantages of a Design Patent for a member of the toy and game industry or community, as compared to non-Design Patents or Utility Patents.

Benefits of Filing for a Design Patent 

Initially, a brief comparison between a Utility Patent and a Design Patent will illustrate the unique benefits a Design Patent holds for the toy and game industry.  In a Utility Patent the invention rests essentially in some functional aspect of the toy or game, whereas in a Design Patent the invention rests in the ornamental appearance of the toy or game.  A Design Patent may be better suited for a new toy or game as many toys or games usually lack a novel functional feature.  By filing for a Design Patent an applicant can still obtain patent protection for the new toy or game in the form of protection over that toy or games aesthetic design.  

Also, as compared to a Utility Patent application, a Design Patent application usually enjoys an expedited or shorter examination time line by the USPTO.  The results of a recent study indicate that over 50% of Design Patent applications issue within one year of filing, and approximately 90% of Design Patent applications issue within two years of filing.   Similarly, over 80% of Design Patent applications issue without any rejection being made by the USPTO.   In comparison, the average time needed for a Utility Patent application to issue is 2.5 years, with an average of 2.4 Office Actions issued by the USPTO prior to a granting of the Utility Patent.   Thus, a quick turn around time for the issuance of a Design Patent application provides a tremendous benefit for a member in the toy and game industry, where many toys and/or games may have a short life cycle. 

Furthermore, a Design Patent provides sufficient cost benefits when compared to a Utility Patent.  The initial USPTO’s filing fees for a design patent application are $460 for a large entity, and $230 for a small entity.  In comparison, the initial filing fees for a utility patent are $1,030 for a large entity, and $515 for a small entity.  Also, as stated above 80% of design patents issue without a single examiner’s rejection, which further cuts the cost for the applicant.  Moreover, the attorney fees for preparing and filing a Design Patent application are usually a fraction of the fees required for preparing and filing a Utility Patent application. 

Examples of Design Patents

These Design Patents will illustrate how useful and versatile a Design Patent can be for the toy and game industry.

Each of these three Design Patents protects the ornamental or aesthetic design for the provided toy.  Also, these Design Patents demonstrate that an application for a design does not have to include any lengthy description or complicated claims, in the manner of a Utility Patent application.  Rather, the Design Patent application must simply illustrate the ornamental or aesthetic design as shown, with a sufficient number of figures that will showcase all the unique aspects of the design.  

Global Harmonization of Design Patent Applications

In the near future, the enactment by the United States of the Hague Agreement will further advance the movement of global harmonization of Design Patents and will further increase the benefits of filing for a Design Patent for the toy and game industry or community.

The Hague Agreement enables an applicant to use a single Design Patent application to obtain Design Patent protection in multiple member countries.  Briefly, in operation, an applicant will submit a fairly standardized application to either the World Intellectual Property Office (WIPO) or the home intellectual property office for the application, for example, the U.S. Patent and Trademark Office.  In the application, the applicant will designate which member countries and/or regions that application wishes to gain Design Patent protection.  Also, the applicant will include a basic filing fee (about $425 for each design), a publication fee (about $18), and a standard designation fee (varies depending on the designated country).  After the submission, the application will go through an examination process pursuant to the laws of the countries designated. 

At a minimum, this new streamline process of filing for Design Patent protection lowers the overall filing cost of filing the Design Patent application in multiple countries or regions around the world.

As an added benefit to U.S. Design Patents, in order to align the U.S. Design Patent system with many regions around the world, the term of a Design Patent will be extended to 15 years. 

Conclusion

In conclusion, as members of the toy and game industry or community, if Utility Patent protection is not possible or cost effective, the addition of Design Patents into a substantive intellectual property portfolio will provide additional benefits both locally and internationally. Thus, consideration of adding Design Patent protection for the ornamental appearance of a toy or game is recommended and encouraged.