Many jewelers, designers, and jewelry makers are less familiar with design patents than they are with copyrights, trademarks, or even utility patents. Yet, design patents—which last 14 years—“are tremendously useful in protecting your rights,” especially if a jewelry design can’t be covered by copyright because it isn’t sufficiently artistic or creative enough to meet copyright requirements, said attorney Jeffrey M. Kaden in his Thursday seminar.
“Without design patent protection, a new jewelry design (if not protected by copyright) will enter the public domain and be freely available for copying by your competitors,” he warned his audience.
To qualify for patent protection, according to federal law, a design must be:
• New and different. It must be novel and appear so to the observer. A design that merely imitates something old, such as a Statue of Liberty pendant, isn’t applicable.
• Ornamental. While a design patent is only given for “useful” items, protection is based on the ornamental appearance, not the use.
• Obvious and inventive. Differences between the design and other designs “must be obvious.”
• Original. The patent applicant must have invented or created the new design “independently without copying or derivation.”
• Limited to articles of manufacture or that could be manufactured. Designs “in the abstract” aren’t applicable. A design must be attached to or incorporated in a tangible object that can be manufactured (such as a ring, necklace, bracelet, or pendant).
Kaden said those employing jewelry designers should have them sign written contracts that expressly transfer all rights to designs they create on the job to the employer. Such agreements establish the employer’s title to the designs as the owner/originator. These must be recorded at the U.S. Patent Office (for a $40 fee) in order to establish title against any other claims.
Applications for U.S. design patents, Kaden told his audience, must be filed promptly and within no more than one year of the first public showing or first sale of the jewelry design. “After a year, there’s no chance of getting a design patent,” said Kaden. For international design protection, however, the designer must file before the first public showing or sale, in order to preserve all foreign rights.
Review and approval of a patent design application takes, on average, a year. Once approved, a patent is good for 14 years. Also, the patent marking is required on the item, either on the jewelry itself or its packaging, a detail, Kaden said, that design patent holders sometimes forget to take care of. “Without the required marking, damages can’t be awarded” in cases of infringement, said Kaden. “So, put it on as soon as the patent approved.”