extend patent agreement

Design patents cover how something looks – its specific shape or configuration. Design patents are used in a variety of industries such as jewelry, clothing, furniture, beverages, shoes, computers, clothing, automakers and others.

Some brands, such as Gucci, have been obtaining design patents for decades. Design patents are often at the heart of many high-profile, high-stakes legal battles between tech companies, such as Apple and Samsung Electronics over smartphones and tablets. Design patents aren’t limited to products. Apple patented the physical layout of its retail stores.

Once the design patent is approved, it gives you protection for the life of the patent, usually 20 years. But what happens if your product design can be licensed for longer?

Here’s a strategy to extend the life of your design patent – combine it with the trademark. What’s the difference between design patent and trademark? The design patent protects the unique look of your product, and a trademark protects design functionality.

Some examples of design patents combined with trademarks include Lego building blocks, Monopoly board game, Dustbuster vacuüm cleaner, and Honeywell’s round thermostat. Oakley uses a design patent to protect the different form and shape of their unique sunglasses. One of the most famous design patents is Coca-Cola’s unique bottle shape.

When should you use this licensing strategy? Here are four top reasons:

  1. When the licensing opportunities for your design have a longer lifespan than design patent.
  2. If your product design is in a highly competitive market with a lot of copying or infringing happening.
  3. Registering both gives you the option to enforce infringement litigation as either a trademark or patent, which can significantly cut your legal costs.
  4. Design patents typically take longer to issue, and if you’re planning to go to market sooner, than obtaining a trademark while the patent gets approved will protect your design until the patent is approved.

Deciding whether to get both a trademark and design patent comes down to how critical the design is to your product, and whether that design will have a long revenue lifespan. If so, then this strategy offers you the best way to protect and maximize the licensing opportunities for your product design.

 

Mr. Brenner has over 30 years IP management and licensing experience with various industries including consumer products, food, entertainment, software,health technology, medical devices and digital media. He has led international licensing programs as both licensee and licensor, and through consulting projects focused on strategy and management, outbound / inbound licensing initiatives, and IP audits and due diligence.. He has developed and managed deals with Fortune 1000 companies including Universal Studios, Fox Interactive, Sony Pictures, Dow, Cargill, SmithKline Glaxo, Ranir, Coca Cola, Kellogg’s, Hasbro, Mattel, and others. He is a public speaker and published writer, and has taught classes at the university level. His speaking events have included UC Irvine, Tritech/SBDC, Irvine Chamber, Fast Start Studios, ICFO Investors Conference, San Diego Investment Conference, Westlaw Legal Center (NYC), National Speakers Association, and the Hong Kong FilmArt Expo. He has written several articles on licensing intellectual property which have appeared in the Licensing Journal, Intellectual Property Magazine, and License India.

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