Design Patents and the Pretzel Patent Troll

“Cool.  What did you invent?”

“A pretzel in the shape of a peace sign.”

“You’re kidding, right?”

That was quite possibly the reaction of many people who heard about the “pretzel patent” lawsuit filed in the US District Court of Western Pennsylvania in Pittsburgh.  Leslie Friend of metropolitan Pittsburgh filed a lawsuit against Keystone Pretzels of Lititz, PA and Laurel Hill Foods of Attelboro, MA alleging they are violating her patent for a peace-sign shaped pretzel, Keystone for making the pretzels and Laurel Hill for selling them.  A picture of the pretzel bag can be seen here.

Friend is the owner of US Patent D0423184, which is titled simply “Pretzel,” and claims “the ornamental design for a pretzel, as shown and described.”  

The picture is from the patent.

Friend is not the original inventor of the peace-sign pretzel.  She bought the rights to the patent from the inventor, Michael Lamont, intending to go into the pretzel business.  Since she has not yet actually started making pretzels, and she isn’t the original inventor, many would call her a “patent troll.” We call her a patent owner.

But how is it that someone can get a patent for a pretzel in the first place?

Many people are not aware that there are several different kinds of patents.  When most people think of patents they think of what are officially called “utility patents,” patents for a new type of product, product feature, process etc.  A better mousetrap.

There are two additional types of patents: plant patents that cover new and distinct plants, and design patents.  The pretzel patent is a design patent.

A design patent does not have to represent a technological breakthrough.  Design patents are issued for a “new, original, and ornamental design for an article of manufacture…”  The US Patent and Trademark Office (USPTO) determined that the peace-sign pretzel design met the qualifications of being new, original, and ornamental, and it issued the patent.  The patent gives the patent owner, Ms. Friend, the right to exclude anyone else from making a pretzel with that design.

There are several important differences between utility (invention) patents and design patents:

Utility patents are based on the invention being “new and useful,” as well as not obvious to a practitioner in that field.  Design patent still need to be new – you could not get a patent for the traditional pretzel shape – but they do not need to be useful. In fact, the patented feature is not allowed to be useful – the patent is for the decorative aspect.

Utility patents are generally valid for 20 years from the date of filing.  Design patents are good for 14 years from the date of issue.

Utility patents require the payment of periodic “maintenance fees” to the USPTO.  Design patents are free from this requirement

One of the most famous design patents was for the Statue of Liberty, US Patent Number D11,023, granted February 18, 1879.  Under protection of the patent, sales of small copies of the statue were used to help finance the making of the full-size version which still dominates New York Harbor.

More recently, design patents have played a part in the “smartphone patent war” between Apple and Samsung.  One of the patents in play,D504,889, covers the rectangular design with rounded edges of the iPad.  A jury found that the Samsung Galaxy Tab did not infringe that patent.

And that brings us to the issue that is at the heart of the lawsuit between Friend and the pretzel companies.  A product does not have to be an exact copy to be found guilty of infringing a design patent: it only has to be “substantially similar.”

If you look close at the drawings of the patent (click on “pages”), you can see that it’s for a pretzel, of what would appear to be standard pretzel thickness. The pretzel chips sold by Laurel Hill are pretzel chips – seemingly thinner the drawing.  Is that “substantially similar” enough to count as a violation of the patent?  Or is it sufficiently dissimilar to get them off the hook?

That is the issue the court will decide, since the defendants have refused to pay a royalty for using the design.

How can we work together? Please contact me if you have any intellectual property (IP) or commercial law needs.

Sweeny Legal announces its IP Dashboard available now, in Wollongong and beyond. Tomorrow’s Lawyer Today.

This Service saves you time, it is convenient, and saves on costs. Alternatively I can come and visit your Office and review your needs

Contact me if you need commercial assistance or  if you need commercial agreement drafting of any kind or IP advice, for example,

Commercial and IP Agreements, Business Relationship Agreements or License Agreements.

Please contact Sweeny Legal  or Brandsworth Licensing should you require any assistance with any Intellectual Property (IP) rights, Commercial Agreements of any type, or IP Business Strategies.

Phone: 02 4228 1864

Mobile: 0417 699 645

eFax: 02 4204 1684 – comes to my email – perfectly secure – my eyes only

Email: info@sweenylegal.com.au

Skype: SweenyLegal

FaceTime: info@sweenylegal.com.au

Contact Sweeny Legal