Jewelry Patent Protection and Infringement Law: Utility and Design Patents

Pandora Jewelry obtained utility patent protection and prevented unlawful copying by filing a patent infringement lawsuit. Pandora sued Cappola Capital Corp. for infringing its utility Patent No. US7007507 and won, forcing the infringer to immediately cease selling and creating the imitation bracelets. This lawsuit reiterates the importance of patent protection for jewelry designers and companies. If Pandora’s bracelets can be copied, so can yours! Prevent opening pandora’s box of infringement through jewelry design and utility patent protection.

Generally, a utility patent protects the way a product is used and works, whereas a jewelry design patent protects the ornamental look of the product. Both utility and design patents may be available for jewelry inventions.

Utility Patents. A utility patent protects a new invention or an improvement to an existing product that is functional. In the jewelry industry, a utility patent may protect a new or improvement to an invention relating to a machine, process, product, or composition of matter. Your jewelry must have an innovative touch that qualifies as novel and non-obvious, such as a special closure, cut, or method.

• We obtained jewelry utility patent No. US8393174 for our client Simon G Jewelry’s invisible setting and also the process and method of making the jewelry.
• Different compositions used to create jewelry are patentable, such as this unique mix of metals that creates wear-resistant jewelry in utility Patent No. US6062045.
• Even interchangeable charms have received utility patent protection in U.S. Patent No. 7007507.

Design Patents. If your jewelry design does not have the functional requirements to receive a utility patent, a design patent can protect your jewelry’s aesthetic designs. A jewelry design patent still requires that the design be novel and unobvious over existing designs, but does not require functionality.

• You can obtain jewelry design patents for anything from a necklace or bracelet design to the design of a display card holder for jewelry.
  • We obtained U.S. Design Patent No. D766125 for our client’s heart pendant jewelry design.
  • We also obtained U.S. Design Patent No. D791592 for our client’s jewelry display card holder.
• Design patents are a viable alternative when a jewelry design does not qualify for copyright protection! But you can obtain both design patent and copyright protection for a piece of jewelry for the broadest coverage.
  • Copyright protection is not always possible, such as when an article is considered useful or does not meet the minimum level of creativity.
  • Even when copyright registration is obtainable, its level of protection can’t defend your creation if another jeweler independently develops a similar design without copying. In Herbert Rosenthal Jewelry Corp. v. Kalpakian, the court found that a copyright for the plaintiff’s bee-shaped jewelry pin was too similar to an idea and that the defendant did not copy or infringe on their exact design, or expression.
  • To avoid the negative ruling in Herbert Rosenthal, consider simultaneously seeking a design patent as a form of extended protection.

Time to Protection. A design patent application can take from a couple of months to eighteen months to issue and can take from two to three years for a utility patent. A utility patent provides twenty years of protection from the date of filing. A design patent provides fourteen years of protection if issued before May 13, 2015, and fifteen years of protection after the grant date. Design patents can also be used to keep competitors at bay while establishing trade dress protection through years of exclusive use.

Money Damages. Utility patent damages are determined based on a reasonable royalty or the patent owner’s lost profits. However, design patent owners can recover the infringer’s profits, which is usually higher than a reasonable royalty.

Using design and utility patents to protect the aesthetic and/or functional aspects of jewelry is essential to lawfully preventing competition from other jewelers in copying your designs. To broaden the scope of protection, copyright registrations and trademark rights can also be combined with design and utility patents to provide a competitive advantage in the jewelry industry.