Q: Hi , If I have designed the flag as a piece of home decor , would I have to make a patent application for this ?

A: If the flag is special because of how it looks rather than how it works or how it is made, then it sounds like on the patent front you would be considering a design patent. A design patent protects the ornamental appearance from being knocked off. Think Oakley sunglasses. People can still sell sunglasses, just not sunglasses that copy a protected ornamental appearance.

NOTE -- design patents have very narrow coverage so if you continue to tweak and change how this looks, then your design patent may not cover your ultimate design. To further complicate things, a design application that you submit three years from now for your latest variation would need to be patentable over your earlier designs so it will get progressively harder to use design patents to protect your design. Not impossible as Oakley acquired a number of design patents but the protection gets narrower over time.

See https://www.flynniplaw.com/services/legal-services/united-states-design-patents for some material about design patents.

So you may have a good idea that will do well in commerce but may not be a good fit for the patent system. You may want to explore trademarks and copyrights as those forms of protection can be obtained for less cost and you can evolve from one design to another.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at

https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

A: I disagree to some extent with Mr. Flynn. A design patent can have a fair range of protection, depending on what your product is, and what decoration makes it special. It's all about how the drawings in a design patent application are prepared. You can claim a part of the design, and leave other parts unclaimed, and thus able to change while still being protected by your patent. Changes in materials usually don't affect a design patent, unless you've claimed a certain kind of material (like a mirror, or a clear/translucent material). And then there is the Maatita case that came out late last year, which greatly expanded the scope of certain design patents.

You may also be able to protect the design by copyright.

And if it's something that people come to associate with your company or your particular product, it might be protectable as a trademark too (trademark, trade dress, etc.).

A: I agree that you should consider a design patent. But, there might be issues with coverage for improvements or changes. The standard for infringement of a design patent is that an ordinary observer determines that the patented design is “substantially similar” to cited prior art. The “overall appearance” of both the accused and patented designs that needs to be considered and specific features or points of novelty are no longer the proper bases for comparison. Under this standard, some modifications will be covered, but not all. The test is subjective.

For more information, see https://www.ahajiamos.com/design-patents for more information.