Patent It Yourself - PDF Archive

24 | Patent it YOURSELF
latter will be cheaper, quicker, and easier to obtain, but
limited to the specific shapes of the letters. Note that unlike
design patents, copyright can be used to cover some aesthetic
shapes even if they also have a significant function.
In many areas both forms of coverage can be used together
for different aspects of the creation. Thus in parlor games,
the game apparatus, if sufficiently unique, can be patented,
while the gameboard, rules, box, and design of the game
pieces can be covered by copyright. The artwork on the
box or package for almost any invention can be covered by
copyright, as can the instructions accompanying the product.
Also the name of the game (for example, Dungeons &
Dragons) is a trademark and can be covered as such.
If the invention can also be considered a sculptural work,
or if it’s embodied or encased in a sculptural work, copyright
is available for the sculpture. However, copy right can’t be
used for a utilitarian article, unless it has an aesthetic feature
that can be separated from and can exist independently of
the article. This rule, known as the “separability requirement,” is
very important in copyright law.
Of course, to emphasize my earlier point, both copyrights
and patents generally have their exclusive domains. Assuming
they don’t have any aesthetic components, patents are
exclusive for machines, compositions, articles, processes, and
new uses per se. On the other hand, copyrights are exclusive
for works of expression, such as writings, sculpture, movies,
plays, recordings, and artwork, assuming they don’t have any
functional aspects.
c. Copyright Compared to Design Patents
There’s considerable overlap here, since aesthetics are the
basis of both forms of coverage. Design patents are used
mainly to cover industrial designs where the shape of the
object has ornamental features and the shape is inseparable
from, or meaningless if separated from, the object. For
example, a tire tread design, a computer case, and the
workshop clock shaped like a saw blade (see Section B,
above) are perfect for a design patent, but a surface decal,
which could be used elsewhere, is not. In other words, if
the work is purely artistic, a design patent is improper.
Copyright, on the other hand, can be used for almost any
artistic or written creation, whether or not it’s inseparable
from an underlying object, so long as the aspect of the
work for which copyright is being sought is ornamental
and not functional. This means copyright can be used for
pure surface ornamentation, such as the artwork on a can
of beans, as well as sculptural works where the “art” and
the object are integrated, such as a statue. For instance, the
shape of a toy was held to be properly covered by copyright
since the shape played no role in how the toy functioned
and since a toy wasn’t considered to perform a useful
function (although many parents who use toys to divert their
children would disagree). The same principle should apply to
“adult toys,” provided they are strictly for amusement and
don’t have a utilitarian function.
What are the differences in the coverage afforded by
design patents and copyright? Design patents are relatively
expensive to obtain (the filing fee is higher, an issue fee is
required—see Fee Schedule in Appendix 4), formal drawings
are required, a novelty examination is required, and the
rights last only 14 years. However, a design patent offers
broader rights than a copyright in that it covers the aesthetic
principles underlying the design. This means that someone
else coming up with a similar, but somewhat changed
design would probably be liable for patent infringement.
Copyright, on the other hand, provides relatively narrow
offensive rights (minor changes in all of the artwork’s
features will usually avoid infringement), the government
fee for registration is very small (see Fee Schedule), the term
is long (the life of the creator plus 70 years, or a flat 95 or
120 years for works classified as made-for-hire). And as no
novelty examination is performed, you’re virtually assured of
obtaining a copyright registration certificate if you file.
It has been said that a design patent is basically a copyright
with the teeth of a patent because it can cover similar areas as
copyright but provides broader offensive rights.
Because the distinctions between design patents and
copy rights are especially confusing, I’ve provided a
comparison chart to summarize the distinctions between
these two forms in Fig. 1D.
4. When and How to Obtain
Copyright Coverage
If you desire to obtain coverage for a copyrightable invention,
program, creation, or for instructions, packaging, or art work
that goes with your invention, you don’t need to do anything
until the item is distributed or published. This is because,
as mentioned, your copyright rights arise when your work
is first put into tangible form. And, although there is no
requirement for a copyright notice on your work before it’s
generally distributed to the public, I strongly advise you to
put the proper copyright notice on any copyrightable material
right away, since this will give anyone who receives the
material notice that you claim copyright in it and they
shouldn’t reproduce it without permission.
When your material is distributed to the public, it’s even
more desirable (though no longer mandatory for works
published after March 1, 1989) that you place a copyright
notice on it to notify others that you claim copyright and
to prevent infringers from claiming they were “innocent”
and thus entitled to reduced damages. This notice should