Issue link: https://www.e-digitaleditions.com/i/646524
44 SMOKESHOP December 2015 P atents. Trademarks. Copyrights. In- tellectual property (IP) rights often play an important role in a compa- ny's business strategy. When a compa- ny spends its resources to develop new products, innovations, brands or designs, it needs to know that others will not quickly swoop in and copy those items. IP rights help protect that investment. Companies can use IP rights to block competitors from copying a new product or trading off the goodwill created in a brand. The strategic use of IP rights can provide significant competitive advan- tage in a marketplace. Patent rights are particularly import- ant for product manufacturers. Patents protect inventions. When most people think of patents, they think of "utility" patents. These patents protect the func- tion of an invention. For example, if a product manufacturer invents a new vaporizer that functions in a novel way, the manufacturer may be able to obtain a patent on the device and the way it works. A "design" patent, on the other hand, protects the look and feel of an in- vention. Using the same example, if the new vaporizer had a unique ornamental design for the mouthpiece, the product manufacturer may obtain a design patent on the look of the vaporizer. For many years, design patents were overlooked because many thought the rights they provided were too limited. However, that perception changed about a decade ago as a result of a few import- ant court cases. Since then, design pat- ents have experienced a resurgence and become a vital part of many companies' IP portfolios. For example, Apple's famous patent victory over Samsung in the smartphone patent wars largely rested on design pat- ents covering the look and feel of the ear- ly iPhones. Thus, companies overlook the value of design patents at their own peril. COMPETITIVE HEAD START A design patent is a property right grant- ed by the government that allows the inventor to exclude others from making or selling a product with the inventor's new ornamental design. It covers the or- namental aspects of a product. This can include the product's shape, configura- tion, or surface ornamentation. Flipping through past issues of Smokeshop maga- zine, one can spot countless new products with innovative looks that could qualify a design patent—vaporizers, lighters, cigar cutting tools, product display tow- ers, box designs, etc. For example, many will recognize that the design of the main drawing from one recently issued design patent (D736,994) owned by Philip Mor- ris Products, S.A. (photo, left) strongly re- sembles the Philip Morris iQOS device. To obtain a design patent, an inven- tor must file a patent application with the U.S. Patent and Trademark Office (USPTO). The main part of a design pat- ent application is the drawings. They de- fine the invention. The USPTO examines the drawings, and if the ornamental fea- tures of the design are novel and not an obvious variant of an existing design, it will grant a design patent to the inventor. Design patents also differ from util- ity patents in a number of ways. De- sign patent applications typically move through the Patent Office much more quickly than utility patents. A design patent can often issue within one year of the application being filed. This could be vitally important in markets, like the vapor products market, with relative- ly short product lifecycles. Also, unlike utility patent applications, design pat- ents do not publish while they are pend- ing at the Patent Office. Thus, you may not know if a competitor is seeking to cover a particular design until after the design patent issues. Design patents also differ in that their 15 year term begins on their issue date, as opposed to utility pat- ents that last for up to 20 years from their earliest filing date. Lastly, unlike utility patents, design patents do not require any maintenance fees after they issue. For this reason, design patents are often much cheaper to acquire and maintain for a product lifecycle. PROVIDING VALUE, LEGAL RIGHTS Design patents provide strong legal rights. The patent owner can use a de- sign patent to prevent others from mak- ing, using, selling, offering for sale, or importing a product with the same or substantially similar design to that cov- ered in the design patent. In practice, this arises when a product manufactur- er invests a substantial amount of time and resources into creating a new prod- uct for the marketplace. Shortly after it is launched successfully, competitors try to follow the successful product launch with a similar product of their own. If REGULATION FOCUS > Design Patents Build Strong, Valuable Brands Product manufacturers value the competitive advantage afforded by patented designs in an increasingly competitive marketplace. > BY CHRISTOPHER J. FORSTNER AND BRYAN M. HAYNES