Design Patents

A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in 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. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.

If you have read The Truth About Idea & Invention Submission Companies, you are aware that I caution inventors to beware those who tout design patents. Design patents are weak and appropriate only in limited circumstances. Nevertheless, design patents can be an extremely useful tool in your intellectual property arsenal, particularly when you are attempting to create overlapping protection, thereby developing a true intellectual property portfolio. This is particularly true thanks to a September 2008 decision by the United States Court of Appeals for the Federal Circuit (the chief patent law court in the US) in Egyptian Goddess v. Torkiya. In this case the Federal Circuit significantly changed the design patent infringement test, choosing to adopt what is known as the “ordinary observer” test. This new test is widely believed to make design patents more valuable because it will be easier to prove infringement. Therefore, I have started to suggest to clients that they strongly consider obtaining a design patent, particularly when they are already filing a utility patent application on a device. Given the cost of obtaining a design patent and this new strength I think design patents are going to become very popular and extremely advantageous. This is evidenced by the fact that Nike sued Walmart for design patent infringement only weeks after the Egyptian Goddess ruling. A lawsuit that probably would not have been filed otherwise.

Notwithstanding the aforementioned favorable change to design patent law, it is essential to understand what you are getting when you obtain a design patent and to understand the limitations of design patents. Design patents do NOT protect an idea or an invention, but rather only protect ornamental design of exactly what is pictured. This means that they are weaker than a utility patent, but because they are VERY easy to get you should consider them to round out your portfolio. Nevertheless, do understand that many patent professionals will refer to a design patent as a picture patent. This is helpful when understanding the limits of the protection. What is protected is what is exactly what is shown in the drawings, nothing more. Those who know patent law realize I have just over exaggerated a bit, but not by too much. Do not rely only on design patents to protect an invention! Design patents protect the exterior of a product, not its internal workings. To protect the function, structure and interior workings of an invention you should consider either a provisional patent application or a non-provisional patent application.

Although weaker than utility patents, design patents do give you the ability to use the coveted terms “patent pending” and “patent issued,” as is appropriate. I have encountered many individuals who are only interested in a design patent for this very marketing purpose. Additionally, if you already have a patent or patent application covering the function of your invention you might want to consider also protecting the exterior design to provide overlapping protection. There is nothing wrong with either motivation, and if that is why you want a design patent you will certainly get your money worth for the cost.

Despite the fact that I have characterized design patents are weak, they can become formidable. Nevertheless, the truth is that if you only have a single design patent and you are hoping to cover your invention you will likely be dissatisfied with the strength of your protection. I have, however, seen design patents take on enormous strength when they are acquired in bulk, for example a significant number of design patents cover essentially identical variations of a single thing. If you have 10 or so design patents on similar variations you harness the power of a portfolio rather than relying on any single patent. If a competitor were to want to step in they would have to get around 10 weak patents, a task that is not very easy to do in many cases. Similarly, if you have a utility patent, one or more design patents (preferably several) can make a nice, economical way to expand exclusivity through the leverage of a patent portfolio.

Two final thoughts on design patents. First, If your application is successful there would be an additional fee of $400 due to the Patent Office, this is called an issue fee. An issue fee is due for all patents, not just design patents. Again, this amount is assuming you are a small entity. If you are not a small entity then the issue fee would be $800. This amount can go up after you file, but likely won’t go up appreciably. Second, there are no maintenance fee payments due for design patents. The term of the design patent is presently 14 years, and once the design patent has issued there are no other financial obligations necessary to keep the design patent pending for the full 14 year term. This is different than when dealing with utility patents; utility patents have ever increasing maintenance fees due at 3.5, 7.5 and 11.5 years after issuance.

For more information about design patents see:

US Patent Office FAQs About Design Patents

The First Design Patent