COFFYLAW DESIGN PATENT CASE STUDY
How COFFYLAW used accelerated examination to secure a design patent for a client in eighteen (18) months. According to data from the USPTO, it takes an average of 20.4 months to secure a design patent (2019).
OVERVIEW
Client came to COFFYLAW with what he believes to be a novel idea. He wanted to protect the unique design of his product. Having reviewed the design, we concluded that our client should indeed pursue a design patent.
Design patents grant to the person having title to the patent the right to exclude others from making, using, offering for sale the specific patented design or article of manufacture.
With a design patent, the patent holder will be able to prevent others from using, making, selling, or importing a product that incorporates the same or similar design or look to the patented design. To prevent others from infringing the design patent the patent holder will have to show that an ordinary observer might purchase the infringing product thinking it was the patented product.
APPROACH
Our client being a start-up with very limited financial resources, we used two (2) prongs of our Intellectual Property (IP) Value Model namely, (1) aid resource allocation decisions (benefits vs. costs); and (2) input for business strategy definition to devise a strategy that we recommended that our client implements.
RESULT
Our client’s design patent application was allowed and issued as US Patent No. D933,350S in about eighteen (18) months from the date of filing the application. The Notice of Allowance (NOA) was issued on 06/16/2021 whereas the application was originally filed on 11/07/2019.
CONCLUSION
The exclusivity a patent provides is a universally accepted and widely known benefit. Having a granted design patent covering your ornamental feature gives you the right to prevent others from commercializing the protected look of your product. Related but less obvious benefits are that as a result of this exclusivity, the patent may be a tool that provide a larger market share than would have otherwise been possible and it also gives you the option of charging a premium for your technology. The patent can also provide a positive public relations effect, as consumers and businesses understand that your technology is innovative and superior. The patent is also an asset, which contributes to the value of the company.
Second, there is the potential to license the patent rights. The license can relate to practical applications, which are covered by the patent, but which are outside of the activities and interests of your company, or the license may relate to territories where your company is not operating. If your business model is to be eventually acquired by another company, then securing your IP can significantly boost the value of your company. Patents are also seen by investors as an important indicator that the technology is valuable and the company can retain its competitive edge (because knock-off products from competitors are barred from entering the market). It can also be useful when entering into joint ventures with others, allowing your company to clearly define what IP you own.
Last but not least, now that the client’s innovative idea is protected, the client is now better placed to define the course of action the business undertakes. This is an example where IP strategy worked seamlessly in concert with business strategy.
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