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...