When to file a design patent

Question

Each day I am getting closer to taking a prototype I have been working on to market. Before it goes public, I would file for a provisional utility patent to determine if it is even a viable product, but I have a few questions before going further with it.

1) Right now, the prototype is about to enter its beta stage and I don't expect any of the ornamental appearances to change, but their may be slight adjustments along the way. Do design patents allow for minute adjustments to the final appearance, such as rounding a corner or moving a detail half a millimeter to the left ect... If not, then would it be better to wait until the very last minute before making the product public?

2) If said product is successful, their will be other versions, but will require very small changes to the outward appearance, will each of these iterations require new design patents?

Thank you

Possible Duplicate Edit:

My future changes are not something that is interchangeable on the same product as the plug is that is described in the possible duplicate question. Each iteration of my product will be for a different "plug" per say, but it will be a completely separate product.

Also, if you read the first sentence provided "A broken line disclosure is understood to be for illustrative purposes only and forms no part of the claimed design." That does not protect the differences, it almost makes it sound arbitrary to even use dashed/broken lines.

I guess that main question would be, can a design patent cover a product line that are all visually similar, or does each product in the line need a design patent.

Answer 1

It's helpful to understand the standard for design patent infringement to understand what you need to do to protect your design.

In 2008 the United States Court of Appeals for the Federal Circuit unanimously ruled en banc in Egyptian Goddess, Inc. v. Swisa, Inc. that a design patent is infringed if an ordinary observer would think that the accused design is substantially the same as the patented design when the two designs are compared in the context of the prior art.

Whether you will need multiple design patents will be dictated by how different your generic design is from the prior art. If the difference between your designs and existing designs is just the placement of the plug, then you would need to patent every different plug placement that you have designed. However, if the plug placement is ancillary to a generic design that is substantially different from existing art, then an ordinary observer would consider your designs to all be substantially similar, and a patent of the generic design should be enough to cover all of your plug placements, and a would be infringer would still infringe regardless of where they placed their plug. The same rationale applies to the rounding of corners and other slight modifications. It all depends on how specific your design patent needs to be to differentiate it over prior art.

Additionally, it is possible to claim multiple embodiments of an invention within a design patent as long as their appearance and shape are similar. See the USPTO brochure on design patent application, pg. 16 for an example.

It is always useful to get a patent attorney involved early just to avoid making missteps. I recently wrote on the value of free attorney consultations. One big benefit being that you can actually share your design with the attorney and they can give you legal guidance based on your actual case.