Once upon a time one of the ways you could spot the scams from the legitimate operators in the patent industry was to look at who was directing clients to get design patents. Design patents have always been easy to obtain, indeed far easier to obtain than a utility patent. Of course, as with many things in life and with virtually everything in the realm of intellectual property law, the easier something is to obtain the less rights that are conveyed. You can obtain a copyright for about $30 if you prepare and file the application yourself, and you get tremendously long protection in terms of the number of years – generations really – but the rights a copyright provides are exceptionally weak.
The general rule about the easier and cheaper the rights the less useful they are has been turned upside down in recent years, at least to some extent with respect to design patents. Unfortunately, not nearly enough inventors are seeking design patent protection. This is particularly the case when you take into consideration the fact that automakers and shoe companies, like Nike for example, file design patent applications on virtually everything. If a design patent works for them why should inventors at least consider it for themselves?
A protectable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Distinguish, if you will, an ordinary steak knife from a butcher’s knife. In any knife there will typically be a handle and cutting blade. A design patent would not protect the mechanical structure, but rather will protect the appearance. In this regard it is possible for many different knives to receive design protection even though the basic handle and blade configuration is well known. The question for design patentability is whether the presentation or appearance of the functional item is unique.
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. In other words, a design patent will protect the way something looks, not the way it functions.
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Typically an inventor wants to protect the function of the invention when at all possible. This is because if you obtain a utility patent you will be able to prevent others from making, using, selling or importing into the United States any product that is functionally covered by the claims in the issued patent regardless of whether the device looks anything like what you are making or anything at all like the drawings in your patent application. For this reason utility patents have been and always will be stronger, broader and far more desirable to have than design patents. But what if you cannot get a utility patent because the underlying invention is not functionally unique, it just looks different? Then you are in the realm of the design patent. Also, what if you have something that is functionally unique but also has a unique visual presentation? Then you might be able to get both a utility patent to cover the function and a design patent to cover the unique physical characteristics that manifest in visual ornamentation.
If you have read The Truth About Idea & Invention Promotion Companies, you are aware that I caution inventors to beware those who tout design patents. Today most of those that many in the industry would identify as scams are not pushing design patents on inventors because of the historical negative view of design patents. That, however, is not good advice any longer. True, design patents are weak and generally appropriate only as a part of a broader, well considered patent strategy, but that doesn’t mean you shouldn’t have them.
Simply said, if you are going to seek and obtain only one design patent then you will likely be extremely unsatisfied with the rights you obtain. However, design patents must be considered by all inventors because of the backlog at the United States Patent and Trademark Office. It can take 3 or more years, sometimes substantially longer, to obtain a patent. By contrast a design patent can in many instances be awarded in as few as 6 to 9 months. Some patent is better than no patent, so inventors with a gadget or device should ordinarily be seeking design patents as well as utility patents for that reason alone.
Design patents can also 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. For example, I have seen situations where one inventor possessed dozens of design patents on a particular product. In one case there were over 40 such patents. The very old studies on design patents, which are really too old to be relevant but are often cited nonetheless, suggest that when litigated 7 out of 10 design patents are ultimately found invalid. The question is which 7 out of the 10? That would mean this fellow would still have 12 viable patents to nail you with if you got too close. So design patents, although weak, can take on significant strength in numbers.
Design patents have also become stronger than ever over the last decade thanks to a decision by the United States Court of Appeals for the Federal Circuit (the chief patent law court in the US) in Egyptian Goddess v. Swisa. 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 accepted as making design patents more valuable because it will be easier to prove infringement. The infringement test now asks the jury to look at the accused infringing product and then look at the design patent and determine whether the infringing product is a copy or not. Previously the jury was supposed to focus only on the point of novelty, not the totality of the drawings in the design patent. Because design patents infringement requires focus on the drawings in total to assess whether an ordinary observer would believe the accused infringing product to be a copy it is far easier to demonstrate infringement, which makes the design patent right stronger. Of course, design patents are still susceptible to challenge as being invalid, and they still do not protect functionality, so having one is nice but having more than one is even nicer!
Now for an illustration. The patent figure shown at the top of this article is taken from U.S. Design Patent No. 765,398, which issued on September 6, 2016. This design patent covers a carrying case with a unique visual appearance. Let’s say that some celebrity is spotted using this carrying case and a photograph of the celebrity with the carrying case appears in People Magazine. A product like this could quickly become a very popular item. In addition to bringing the inventor great success, whenever there is this type of high profile success there will be knock-offs that enter the market. Knock-offs exist because they look the same, or at least close enough to the original to be desirable. With a patent, even a design patent, you have a tool to prevent knock-offs from being sold and even imported into the United States, which makes design patents a particularly important weapon in the never ending war against knock-offs and counterfeits.
As the chart below demonstrates, design patent applications have been on the rise since 1975, but still in fiscal year 2015 there were just less than 37,000 design patent applications filed. Even though the number of design patent applications has substantially increased as a percentage over the years, the total number of design patent applications filed strikes me as extraordinarily low given the number of inventions that could potentially receive a design patent.
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, which is very low in comparison to obtaining a utility patent, and this new strength I think design patents should become increasingly popular and extremely advantageous.
Notwithstanding all the reasons to consider seeking a design patent, it is absolutely 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 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 filing either a provisional patent application or a non-provisional patent application because ultimately you will need a utility patent. Likewise, do not rely on only a single design patent and believe that variations in look are covered. Extremely slight variations might be covered, but for inventors it is best to assume that each unique variation no matter how slight should be covered in its own design 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.
Some final thoughts on design patents.
- Design patent applications are heavily leveraged on patent drawings. You absolutely cannot skimp on professional patent illustrations, they are EVERYTHING to a design patent application and you should anticipate paying in the range of $600 for high quality design patent drawings.
- The filing fee due to the USPTO for a large entity is $760. For small entities this fee is cut in half to $380. For micro-entities the fee is cut in half again to $190. If you are successful in obtaining a design patent the large entity will pay $560 for an issue fee. For small entities the issue fee will be $280, and micro-entities will pay $140.
- For newly filed design patent applications the term is 15 years, and once the design patent has issued there are no other financial obligations necessary to keep the design patent pending for the full 15 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 in order to keep the utility patent alive and out of the public domain.
If you need help with your design patent application please let me know.