When the shape of a product matters

Two desk lamps light the same book. You recognize one of them across the room by its proportions, its silhouette or its finish. For you as the designer, that appearance is part of the work. For your customer, it is part of why they want the lamp.

The law treats that appearance as the ornamental aspect of a product: its three-dimensional shape, or two-dimensional features such as patterns and colors. Most countries protect it only once you register the design; some protect designs as design patents; some also give unregistered designs a protection that is limited in time and scope. 1 So start with the visual feature you care about, then pick the right that covers it.

In the United States appearance has a patent route

A U.S. design patent protects a new, original and ornamental design for an article of manufacture: its shape or configuration, the ornamentation applied to its surface, or both. A utility patent protects the way an article is used and works; a design patent protects the way it looks. 2 One product can have both. A design patent lasts 15 years from the date it is granted. 7

Split the product into layers before you decide anything. Take a bottle. A new dispensing mechanism is a utility-patent question. A distinctive ornamental bottle shape is a design-patent question. An illustrated label is a copyright question. Each layer qualifies or fails on its own, so a decision about one layer does not settle the whole product.

The drawings carry the claim

Every design application must include a drawing or a photograph of the claimed design, with enough views to show its whole appearance. Drawings are normally black ink on white paper; photographs must leave out the article's surroundings. Show the parts you do not claim in broken lines, and state in the specification what the broken lines are for, for example: "The broken lines showing the dashboard form no part of the claimed design." 2

You cannot add new matter to the drawings after filing; even adding surface shading later can count as new matter. 2 That is why your marketing photograph is not an application drawing. The photograph makes a customer want the lamp. The drawing defines exactly which appearance you claim, and nothing more. Have a registered patent attorney or agent review the drawings and broken lines before you file, because you cannot repair them afterward.

To file:

1. Prepare the drawings or photographs, the design application transmittal form (PTO/AIA/18), the fee transmittal form (PTO/SB/17), an application data sheet (PTO/AIA/14) and the inventor's oath or declaration (PTO/AIA/01 or PTO/AIA/08). 2
2. File online through the USPTO's electronic filing system, Patent Center. 2
3. Pay the filing, search and examination fees. Small and micro entities pay reduced fees; check the current amounts on the USPTO fee schedule. 2

There is no provisional application for a design, 4 so your first filing is the full application with final drawings.

Copyright and brand identity add different questions

Copyright covers the design of a useful article only to the extent that it has pictorial, graphic or sculptural features you can identify separately from, and that can exist independently of, the article's utilitarian aspects. A useful article is one with a practical function beyond showing its own appearance or conveying information. 3 A drawing printed on the lamp shade can be a copyright work; the lamp's shape counts only to the extent it passes that test.

A product shape can also work as trade dress, but the bar is high. The USPTO treats product design as never inherently distinctive: to register it you must prove that buyers already recognize the shape as coming from you. A functional feature, one that is essential to the use or purpose of the article or affects its cost or quality, cannot be registered at all, however well known it is. If a utility patent claims the feature, you carry a heavy burden to show it is not functional. 5 A good-looking design is not automatically a trademark.

Describe your visual choices concretely: the contour, the repeated pattern, the arrangement of elements. "Protect the look" is too vague to act on. A precise description shows you what to draw for a design application, and it helps you tell a close copy apart from a product that shares a common style or solves the same functional problem.

Release timing and geography matter here too

Before a design goes into a public catalog, a trade show or a crowdfunding campaign, decide where you want protection:

1. List the countries where you will make or sell the product. A U.S. design patent has no effect abroad, 2 and most countries protect a design only once it is registered. 1
2. File before you publish if you want protection outside the U.S. The USPTO warns that in most foreign countries, publication before the filing date bars a patent. 7 Before you show an invention to the world walks through disclosure planning.
3. Use the priority window. After your first design filing, you have six months to file in other Paris Convention countries and keep that first filing date. 7
4. Consider one international application under the Hague System: a single application in one language can cover up to 100 designs in the same Locarno class across the member countries you designate. 6 1 U.S. applicants can file through the USPTO as an office of indirect filing or directly with WIPO; filing directly with WIPO may require a foreign filing license first. 6

You do not need to make every shape exclusive. Pick the visual contribution that matters to the project and protect that one in the places you will sell.