Design patents are, in my opinion, an unfortunately overlooked patent. While a single design patent is a weak form of protection, they can be obtained quickly, rather inexpensively, and you can market the product using the terms “patented design” once a design patent has been obtained. Therefore, inventors and their representatives would do well to consider whether one or more design patents would be useful to supplement protection sought by a utility patent in order to facilitate a larger business strategy.
Design Patents and Design Patent Applications
In a design patent application, the subject matter claimed is the design embodied in or applied to an article of manufacture. A design patent does not cover the article itself, the way it functions or any internal mechanical structure. A design patent merely protects the appearance of the tangible article.
A good example is the pressure washer shown to the right. This design patent will cover the way the device looks, not the function of a pressure washer. So if someone make a power washer that looks different they would not be infringing.
In general terms, a “utility patent” protects the way an article is used and works, while a “design patent” protects the way an article looks. Therefore, design patents are made up of drawings that show the invention and very little text. The drawings required include the following views: top, bottom, front, back, left and right. Each of these six view is required unless one or more repeats. A perspective view (shown to the left) can also be included and is frequently helpful.
With respect to the pressure washer shown to the right, notice the broken lines. The claimed invention is shown in solid lines. The two most common uses of broken lines are to disclose the environment related to the claimed design and to define the bounds of the claim. Structure that is not part of the claimed design, but is considered necessary, may be represented in the drawing by broken lines. This includes any portion of an article in which the design that is not considered part of the claimed design.
Because a protectable design is manifested in a particular appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.
Both design and utility patents may be obtained on an article if an invention resides both in its utility and ornamental appearance. For example, consider a sneaker. If you were to create a unique outward appearance for the sneaker you could seek and obtain a design patent. If the sneaker itself operated mechanically different, perhaps by dramatically reducing the impact felt by the wearer as the result of some unique material used in the sole, then the sneaker could also be protected by a utility patent because the invention would also include a functional component. A design patent alone would not protect any functional aspects of the sneaker.
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While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles may possess both functional and ornamental characteristics. For that reason inventors and their representatives should always ask themselves whether it is appropriate to simultaneously seek both a utility patent (to protect function and internal mechanical structure) and a design patent (to protect the way the article visually presents).
Design Patents vs. Utility Patents
Generally speaking, design patents are much easier to obtain than are utility patent applications. Furthermore, design patents can generally be granted with 12 months of filing an application. The cost of the application process and examination is quite a bit cheaper than the associated cost of filing and seeking a utility patent application. Still, design patents are generally considered a weak form of protection because they specifically only protect the way something looks. Any variation in appearance could make it impossible to use a design patent to stop what may otherwise seem like a copy or knock-off. But given the ease with which they can be obtained and the relatively low cost having design patents to supplement a patent portfolio can be a very wise choice, particularly if multiple design patents are obtained.
Some of the more common differences between design and utility patents are as follows:
- Generally speaking, the term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date, while the term of a design patent is 15 years measured from the date of grant.
- Maintenance fees are required for utility patents, but no maintenance fees are required for design patents.
- Design patent applications include only a single claim, while utility patent applications can have multiple claims.
- Restriction between multiple, distinct inventions is discretionary on the part of the examiner in utility patent applications, while it is mandatory in design patent applications. This means if you have more than one design you will almost certainly require multiple design applications unless the variation is quite small.
- Foreign priority can be claimed for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications.
- Utility patent applications may claim the benefit of a provisional application for up to 12 months, but design patent applications may not claim priority to a provisional patent application.
- A Request for Continued Examination (RCE) may only be filed in utility and plant applications, while RCE is not available for design applications. However, a continued prosecution application (CPA) is available for design applications (and not for utility applications). Functionally, an RCE and CPA are quite similar from the applicants perspective.
- Utility patent applications filed on or after November 29, 2000 are subject to publication, but design applications are not published.
For more basic information on design patents please see:
- Design Patents 101 – Protecting Appearance Not Function
- Patent Strategy: Building a patent portfolio with meaningful rights
- U.S. Patent and Trademark Office Issues 700,000th Design Patent
- Design Patent Infringement: How to decide if you should sue
- A Brief History of Design Patents
- The Power of Portfolio: Strong Design Patents III
- Strong Design Patents: The Power of Color
- Strong Design Patents: The Power of The Broken Line
- Design Patents: The Under Utilized and Overlooked Patent
- Surprisingly, US Design Patent Filings Down in 2009
- Google Granted Design Patent on Search Webpage