Smart phone icons are capable of being protected by design patents if the design is sufficiently novel and the design patent application is carefully drafted. The design patent application must be carefully drafted to show an article of manufacture. Malhotra Law Firm, PLLC has the ability to draft an appropriate design patent application.
The depiction of an article of manufacture is necessary to ensure that any design patent covers more than mere abstract, two-dimensional, surface ornamentation.
The U.S. Patent and Trademark Office considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection. Thus, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement of the patent laws.
Computer generated icons including images that change in appearance during viewing may also be the subject of a design claim. Such a claim may be shown in two or more views.
Note that icons can be protected by either trademark, design patent, or both. The laws behind the different types of protections are very different.
A design patent holder can sue if he notices design patent infringement. The design patent gives the owner the right to prevent others from making, using, or selling a product that so resembles the patented product that an “ordinary observer” might purchase the infringing article.
If a trademark is infringed, a likelihood of confusion has to be shown. The tests are different and there can be an advantage to being able to use one or the other in litigation. Also, a design patent is presumed to be valid and an infringer bears the burden of showing that it is not valid. Pendency is shorter than regular utility patents, fees are much lower, and allowance rate is high. Design patent holders may be able to obtain all the infringer’s profits (damages calculation is different from utility patents) and may be able to seek a preliminary injunction, before completion of a lengthy litigation.
A design patent lasts for 14 years from issue while trademarks can last indefinitely if appropriate renewal and other documents are filed when required.
Also, if a design patent application is filed, the app designer may use the phrase “Patent Pending” until the design patent is issued. A design patent is not nearly as strong as a utility patent and only protects ornamental appearance of the icon or a screen, not functionality of the app. The strongest protection for a phone app will use a combination of utility patent, design patent, trademark, and copyright protection.