Patents properly protecting plumbing products

 

By Tim Engling

 

With all the time, resources and effort put into developing plumbing products, you certainly want to prevent your inventions and designs from being copied. Patents, either utility or design, can do just that. The patent office grants exclusive property rights to inventors in exchange for disclosing their inventions. A common misconception is that patents grant the right to make a product, but actually, they grant the right to exclude others from making, using, offering, selling or importing inventions covered by the patent.

 

It is important to understand the differences between utility patents and design patents to ensure that the proper ornamental or structural aspects are protected.

 

Utility patents

 

Typically thought of as a “patent,” a utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement of those items. Structural and functional aspects of new plumbing devices might be protected as long as they are novel and non-obvious.

 

Design patents

 

A design patent protects the new, original, ornamental appearance of a design of an article of manufacture. Ornamental aspects of new plumbing products may be protected as long as similar or obvious designs are not already known. A design patent does not protect functional aspects or the “idea” itself. Such functional aspects would have to be protected by a utility patent.

 

After a patent is granted, the terms and fee requirements are different. Generally, the term of a new utility patent is 20 years from the filing date of the application, or sometimes, from the filing date of an earlier related application, subject to paying three maintenance fees at 3.5, 7.5 and 11.5 years. No maintenance fees are due for U.S. design patents, which last 14 years from issuance.

 

While it may take a year for a U.S. design patent to issue, utility patents often take longer and are also typically more involved and expensive.

 

The scope of patents is determined by their claims. For a utility patent, its claims are interpreted and compared with a potentially infringing device to analyze coverage. The scope of design patent protection is somewhat narrower, in which an ordinary observer must view the design as substantially the same to be deceived and induced into purchasing the copy thinking that it is the original.

 

The term “patent pending” or “patented” is a barrier for others entering the market or at least from copying the invention or the exact design. To “design around” a patent, some element, limitation or sometimes equivalent in the claimed invention must be avoided. But small changes in appearance can sometimes avoid a design patent.

 

Patentability searches

 

A preferred initial step, a patentability search can identify whether filing an application is warranted. A patentability search includes analyzing prior art to see what similar devices exist. Such searching is not required to file either a utility or design patent application, but it may be useful in determining whether bathroom or kitchen designs are new or non-obvious over the existing art. Searches are more typical for utility patents than design patents. Patentability searches and opinions may help in determining the scope of potential protection, preparing patent claims, and providing prior art to disclose to the patent office as part of filing an application.

 

Prompt filing may be important to preserve rights in the U.S. and other countries

 

Factors other than existing prior art may preclude the availability of patent protection. For example, by statute, patent protection is not available in the U.S. for an invention that was sold, offered for sale, or in public use in the U.S. more than one year prior to the filing date of a U.S. patent application, or that was described in a printed publication anywhere in the world before the invention or more than one year prior to the filing date of a patent application. Thus, sale, use or publication of the invention may preclude patents.

 

Similarly, patent protection in other countries may be precluded if the invention was publicly divulged prior to the actual filing date of a patent application in that country, or prior to the earliest claimable priority date. Ideally, an application should be filed before invention is made known to maintain absolute novelty before disclosure and sale.

In conclusion, patents are useful tools to protect rights in plumbing products. Utility and design patents protect different, but significant, aspects of new inventions.

 

Tim Engling assists clients in analyzing, securing, protecting, managing and enforcing their intellectual property rights, including copyright, trademark, patent, various designs, trade secret, and related rights. He is a registered U.S. patent attorney and is authorized to practice trademark law in the U.S. and Canada. He has helped clients obtain and protect intellectual property rights throughout the world. He can be reached at engling@millercanfield.com.