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[af]

I have a client who has a "widget" that has a unique ornamental appearance that I would to help him protect in a design patent. Here is the challenge. The widget has an offset pivoting element that allows a portion of the widget to mounted at various angles compared to the rest of the widget.

I am having a hard time visualizing how I would capture this in a single design patent. It seems to me that as the element as pivoted it creates the possibility of more than one ornamental appearance, which from my understanding, is not permissible in a design patent. Does anyone have any suggestions or guidance?

Thanks,
Alan

[af]

Anyone?

Thanks, Alan

[bleedingpen]

I am having a hard time visualizing your widget.  Plus it sounds like you might be trying to get design patent protection on a somewhat functional aspect of the design. 

I would just pick one shape and file it.  You can always file with the thing in multiple positions and you may or may not get a restriction requirement.  I don't think this would be any different than a design patent for a chair that is shown in an upright, reclined, and lay flat position. 

[BobRoberts]

Perhaps a similar/analagous situation would be for the design of a pen with cap.  In one drawing, one may show the drawing described with the cap disposed above (not connected with) the writing end.  In another drawing, one may show the pen with the cap applied over (connected with) the writing end. 

Perhaps you could do something similar, where after showing top/side etc..., a figure showing the pivoting portion disposed in a first position, and another figure showing the pivoting portion in a second position.  Same object in a sidderent position, showing a different aesthetic aspect of the same design...

Just a thought.

[Yak]

I agree with the others, show the widget in the various different positions as would be seen in use and describe the same in the figure description.  Although be aware if portions of the widget are shown or hidden in certain positions and not so in other positions that you are careful to completely show all the elements in the various views or  you may get a 112 rejection.  For example, if when in position 1 surface A is hidden but in position 2 surface A is visible, make sure you show enough views of the widget in position 2 to completely enable surface A.

[af]

Thanks everyone for your replies.

I don't think this would be any different than a design patent for a chair that is shown in an upright, reclined, and lay flat position. 

Yes, this example is analogous to a reclining chair, except imagine that once the chair is set in either upright, reclined, or flat position, it stays that way permanently. So in a sense, the widget settles into one of several permanent fixed positions. What I would like to protect against is an infringer who practices any one of those fixed positions. For example, their widget might be non-adjustable by looks identical to one of the fixed positions that our widget settles into to.

I agree with the others, show the widget in the various different positions as would be seen in use and describe the same in the figure description. 

The crux of my question is would drawing the widget, as you, Bob Roberts, and BleedingPen suggest, showing several of the positions, restrict enforcement to someone who practices ALL of the positions shown? Aren't all design patent drawings within a single design patent illustrating a single claim? If that is true, then I wouldn't I need a separate design patent to protect each position?

Thanks,
Alan

[JimIvey]

except imagine that once the chair is set in either upright, reclined, or flat position, it stays that way permanently.

That much sounds functional.  I'd ignore that in preparing the design patent application.

As for whether drawings of different states of the same thing covers each state individually, I don't know.

Regards.

[NJ Patent1]

IMO:  If each "position" of  my too-seldom-used  beach chair reperesents different ornamental features, it is a different design and, consistent w/ JimIvey's post, you may well be skirting with including functional features (i.e. adjustability) if your try to claim the way the slots or groves on the chair look.  Every feature that would be noted by the normal observer is just that, regardless of position of the chair. IMO if the ornamental features are the same regardless of position of the chair, a claim to the ornamental features in one position appears sufficient. 

[af]

IMO:  If each "position" of  my too-seldom-used  beach chair reperesents different ornamental features, it is a different design and, consistent w/ JimIvey's post, you may well be skirting with including functional features (i.e. adjustability) if your try to claim the way the slots or groves on the chair look.  Every feature that would be noted by the normal observer is just that, regardless of position of the chair. IMO if the ornamental features are the same regardless of position of the chair, a claim to the ornamental features in one position appears sufficient. 

Thanks NJ Patent 1. A very clear explanation. In my example, basically once the device is set in position, it will generally remain in that position. The adjustable aspect comes into play mainly when the device is being setup.

Wouldn't the relationship of one element to another present a different ornamental appearance or impression to the ordinary observer if, for example, in one fixed position the elements are at a right angle to each other, in another fixed position the elements are at a acute angle to each other and the elements are offset in the second position compared to the first position?

If I understand what you are saying, that would mean that each position that creates a distinct ornamental appearance would require a separate design patent.

In answer to your question about the functional elements, fortunately, they are hidden so I don't need to disclaim them.

except imagine that once the chair is set in either upright, reclined, or flat position, it stays that way permanently.

That much sounds functional.  I'd ignore that in preparing the design patent application.

Probably another reason for claiming each basic position in a separate design patent.

Thanks again everyone!
Alan

[NJ Patent1]

af:  not too fast.  Is the "overall appearance" or "look" of a functional thing (chair, jewelry box) even subject matter for a design patent?  Never considered the point. Hmm potentially trade dress?  I've done them (designs) for cosmetics dispensers, but the "ornamental features" claimed were the same, regardless of whether the pump was "up" or "depressed" .  What does "ornamental" mean?  Bad hypos make bad threads, but I'll continue.  My hypothetical adjustable beach chair has a distinctive ornamental webbing (not equally dimensioned strips at right angles but alternating wide and narrow strips criss-crossed at 45 degs to eachother).  I'm claiming an ornamental design for an adjustable beach chair.  The position of the (adjustable) back of the chair is irrelevant.  The webbing "looks" and remains the same.  I might say Fig 1 depeicts the ornamental design when the chair is in the upright position.  Figure "x" depicts the ornamental design when the chair is in the reclining position.  Aren't these just different "views".    In a top-down view, you might not even know what position the chair-back was in.  What ornamental features are apparent to the ordinary viewer in ALL positions?  The criss-cross pattern. 

[af]

af:  not too fast.  Is the "overall appearance" or "look" of a functional thing (chair, jewelry box) even subject matter for a design patent?   

If I understand your question correctly, I believe the answer is yes.  You claim the overall ornamental appearance of a functional thing. Numerous examples out there all the way back to Gorham (the ornamental design of a fork), the Coca Cola bottle (D48,160 from 1915), a nail buffer (Egyptian Goddess v. Swisa) and the iPhone4 (D636,392). 

My hypothetical adjustable beach chair has a distinctive ornamental webbing (not equally dimensioned strips at right angles but alternating wide and narrow strips criss-crossed at 45 degs to each other).  I'm claiming an ornamental design for an adjustable beach chair.  The position of the (adjustable) back of the chair is irrelevant.  The webbing "looks" and remains the same.  I might say Fig 1 depicts the ornamental design when the chair is in the upright position.  Figure "x" depicts the ornamental design when the chair is in the reclining position.  Aren't these just different "views".    In a top-down view, you might not even know what position the chair-back was in.  What ornamental features are apparent to the ordinary viewer in ALL positions?  The criss-cross pattern. 

I would agree with you if I were just claiming the webbing and disclaiming the other elements as part of the environment. But if you were claiming the appearance of the entire chair, my understanding is that all elements of the appearance that you do not disclaim are limitations on infringement.

Here is simple example to understand the lines along I am thinking. Take, for example, a vase with a unique shape. The vase also has a unique surface ornamentation. Do you file one design patent or two? Say that both the shape and the surface ornamentation are important to the client. I would file two. One for the vase disclaiming the surface ornamentation as part of the environment and a second one for the surface ornamentation showing the vase as the environment. If only the shape of the vase were important to the client, I would file a design patent with only the shape of the vase, possibly with the surface ornamentation shown as part of the environment.

I would not file a single design patent with both features together if I were trying to protect just the shape, otherwise someone could come along, make a vase with the same shape and no pattern and not infringe. Right?

I guess the point I am getting at is that my thinking is always that less is better (to the point of novelty and non-obviousness of course). If I claim a device that can settle basically into say three semi-permanent positions, each distinctly different looking (and each important to the client). Wouldn't I be better off with three design patents? Wouldn't incorporating all three into one design patent as different views allow someone to practice any one of the views without the other and not infringe?

Thanks for bearing with me on this.

Alan

[George White]

Why not put all versions in one application and see if you get a restriction requirement? Or don't get a restriction requirement.

--George

[af]

Why not put all versions in one application and see if you get a restriction requirement? Or don't get a restriction requirement.

--George

Thanks George. My concern about putting all versions in one application is that design patents have only a single claim. It seems to me that each and every view represents a limitation of that claim. Is this a correct interpretation?

To me, that would mean that if all versions were shown in a single design patent, than someone would have an ornamental design that practices all versions (i.e. all of the limitations) illustrated in order to infringe.

Alan

[NJ Patent1]

AF:  You raise some food for thought.  One difference, “bottles”, “forks” and “nail-buffers” have different “views” (top, side, etc.), but not different "positions" (a Coke bottle upright vs on its side?  Just rotate the figure 90 deg?).  As I typed, bad hypos may make bad threads.  But in my hypo, every position of my beach chair, from every point of view (x-cept side view in which case it looks exactly like all other beach chairs) shares a common ornamental feature - the distinctive webbing.  That’s what I’m claiming - an ornamental design for webbing of a beach chair.  All chairs look “basically” the same in profile in all positions.  What else would I claim?  A design of a chair in an upright position, another patent for a design of a chair in the reclining position?  Maybe that is indeed the strategy to take if it fits your problem: three separate applications.  What would the respective claims read like?
 
Isn’t there ANYTHING in common between ALL of the positions of the article in question?  Something you could capture and claim?  At the end of the day, if someone makes a beach chair that looks just like my chair in ANY ONE position in normal use, I’ll sue.

Question: How many design patents could I file for a Swiss army knife?  All closed, all open, blade-up but bottle opener down, blade and opener down but scissors up? They all make a different visual impression.  I'd go for a longer-lasting utility patent.  No?