Design Patent
Design Patent vs. Utility Patent
Time Deadlines
What is it?
What does it protect?
How do you get it?
How long does it last?
What are the advantages?
What are the disadvantages?
How much does it cost?
Design Patent vs. Utility Patent
In the United States there are two distinctly different types of patents available: design patents and utility patents. Over six hundred thousand design patents have been issued while over seven million utility patents have been granted.
Utility patents protect the functional and structural features of a product without regard to how it looks. Design patents, on the other hand, protect the ornamental appearance of a product without regard to how it functions.
Although many patent law rules apply to both design and utility patents (e.g., you must apply for a patent within one year of the first printed publication or offer to sell the product), design and utility patents generally protect dissimilar things. This is manifested in the distinctly different types of claims which are presented in these two types of patents:
A utility patent "claim" is a numbered paragraph at the end of the patent which describes in words what the inventor regards as his "invention". There can be one or many claims; typically, there are around 20 claims in each application which get examined for "novelty" and "non-obviousness" by the patent examiner. The patent law requires that these claims be supported by a detailed written description of the invention, together with drawings of the product (which need be only schematics or sketches). The application must disclose the "best mode contemplated by the inventor for carrying out his invention".
Utility patents can be very valuable in that they protect the structure and function of the product described in the claims, plus equivalents.
Thus, the protection provided by a utility patent is theoretically not limited to the precise embodiment of the product shown and described in the specification and drawings; functional and structural equivalents are protected as well.
In contrast, a design patent is relatively simple. There is only one claim, and it standardly reads something like: "The ornamental design for a widget as shown and described." Thus, there is no detailed specification; no detailed claims to draft. Your protection, in other words, is defined by the drawings in your design patent application. Thus, the one area in a design patent application requiring the greatest care and thought (and the one most frequently overlooked by most patent practitioners) is the preparation of the design patent drawings.
Many a design patent lawsuit has been lost because insufficient thought was given to the patent drawings at the beginning of the patent process. The scope of protection of a design patent will depend on what is illustrated in the patent drawings, plus how close the prior art designs are to the patented design.
And yes, it is certainly possible to get a utility patent and a design patent on the same product.
Time Deadlines
Unlike copyright and trade dress protection, you must file your design patent application (and/or utility patent application) within one year of:
- The first offer for sale of a product embodying the design;
- The first illustration of the design in a printed publication; or
- The first public use of a product embodying the design.
This one year time period, commonly referred to as the "grace period," also applies to obtaining a design registration in the European Community (called a Community Design).
The grace period in many other foreign countries is non-existent - you must file for design protection before any of the events noted above in order to preserve your rights.
Fortunately, an international treaty known as the Paris Convention allows filing of a design patent/registration in a foreign country within six months of filing a design patent application in the United States to have the same effect as if you filed in the foreign country on the day you filed in the U.S. In the case of a utility patent, this time period is one year.
Thus, it is important to give attention to the design (and utility) patent possibilities very early on in the product development process.
Normally, the product development process conceives the functional and structural aspects of a product before the appearance is finalized. Thus, one normally investigates the utility patent possibilities first, and turns to design patent possibilities about the time when the actual production model is being finalized. This is because the design patent drawings must accurately reflect all or a portion of the actual product that is going to be marketed, since the primary thing a design patent protects against is knock-offs.
This approach also makes sense in view of the reality that a utility patent application takes much longer to prepare than a design patent application, and also because one normally wants additional lead time to investigate, by means of a patent search, the probability of obtaining a utility patent before one makes the relatively large investment required to apply for and obtain a utility patent.
It is normally not cost-effective to perform design patent searches prior to filing, since most original designs are unique enough to be patentable, and since the cost of a design patent application would be about the same as the cost of a search.
What is it?
A design patent gives its owner the right to prevent others from importing, making, using, offering for sale, or selling the claimed design (i.e., the design generally illustrated in the patent drawings).
What does it protect?
Two aspects of the ornamental appearance of a product can be used separately or together as a basis for applying for a design patent: (1) its shape or configuration; and (2) its surface decoration.
There is almost no restriction on the type of product which may be protected with a U.S. design patent. For example, among other things, design patents can protect apparel, automobile parts, computer products, containers, cosmetics, electronics products, textile designs, home furnishings, home appliances, jewelry, motor vehicles, office supplies, optics and toys. Some of the more novel products covered by design patents include: architectural buildings, computer screen icons, pharmaceutical tablets, snack foods, and multi-colored toothpaste. View PDF of a selection of design patents covering many of the product categories noted above.
How do you get it?
A design patent application must be filed in the U.S. Patent & Trademark Office (PTO). The application is relatively simple, consisting of drawings of the design, a brief description of the drawings, and a single, standard format claim. View PDF of a typical design patent. Photographs of the design may be used in lieu of pen and ink drawings.
The major requirements for obtaining a design patent are that the design be ornamental, novel, and not obvious to a designer of ordinary skill of the type of product in question.
For new designs, it is ordinarily not difficult to satisfy these requirements before the PTO. Many product designs are such that the PTO allows the design patent application in the initial Office action. Thus, prosecution costs are frequently minimal. With some designs, however, this is not so. For example, where the product of necessity is the same general shape as prior products, and does not have much of any surface ornamentation (e.g., truck fenders), rejections from the design patent examiner can be expected. Prosecution proceeds as with utility patent applications described elsewhere on this site, except that in a design patent application, there is no amendment to the claim language in order to define over the prior art. However, depending on what was initially disclosed in the application, it may be possible to amend the drawings during prosecution to either better define over the prior art, or simply broaden protection.
How long does it last?
A design patent lasts 14 years from the day it issues. There are no maintenance fees required for design patents. A pending design patent application provides no protection, although you can label your product with the "Patent Pending" warning. The average pendency time of a design patent application is about 1-2 years, by which time, of course, certain products' useful lives may well have run their course.
However, expediting techniques are available which allow one to obtain issuance of a design patent in as little as six months after filing.
Although the procedure for expediting costs more, it means that the design patent can be in hand, ready to enforce against knockoffs, when they hit the market.
What are the advantages?
The advantage of design patents over copyright is that there is no requirement in the patent law that the appearance of the product be "separable" from its functional features.
Furthermore, there is no requirement to prove copying by the infringer in order to win in court; this means that "independent creation" is not a defense in design patent law as it is in copyright law.
All the design patent owner has to show in order to win is that the patented design and the accused design are substantially the same in overall appearance.
Unlike trade dress law, one can get a design patent regardless of whether the particular product has been successfully marketed. In fact, one can obtain a design patent regardless of whether the protected design has ever been made or sold.
As a result of it having been examined, a design patent is presumed valid by law, and in a lawsuit the alleged infringer has the burden of proving by clear and convincing evidence that the design patent is not novel, is not ornamental, or would have been obvious to a designer of ordinary skill. That burden is a heavy one, and has resulted in very few design patents being held invalid in court.
The widely-held belief that only exact copies of the patented design can be stopped is not true. As long as the two designs are substantially the same in overall appearance, minor differences in detail are not enough to avoid infringement. View PDF of patented Gorham item and two infringing designs.
Careful procurement of the original design patent can result in a broad scope of protection, one which can protect not only the particular embodiment of the design, but perhaps the general design concept as well.
Last but not least, when the case for infringement is strong, design patentees have a good chance of obtaining a preliminary injunction in court.
A preliminary injunction is an order of the court, usually applied for and granted at the very outset of a litigation, which requires the infringer to immediately cease and desist from making, using and selling the patented design. The order remains in effect until the trial, usually scheduled for many months later, is over. Although technically the granting of a preliminary injunction does not end a case, as a practical matter it often leads to a quick settlement since the infringer has, in effect, been put out of business until at least after the trial.
Design patents make for good court cases, since no technical expertise is necessary for a judge to decide whether the infringing product is substantially the same in overall appearance as the patented design. This potential of immediate relief in court is reason enough to make design patents the backbone of your design protection portfolio.
What are the disadvantages?
One disadvantage is that only one design may be protected in a single design patent application, although multiple embodiments may remain in the same application as long as they are "obvious" variations of each other.
Also, in order to preserve design rights in many foreign countries, one needs to file a U.S. application before any non- confidential disclosure of the design. In other words, if international protection is desired, a designer must commit to the expense of a design patent application before sometimes knowing whether the design is going to be a commercial success. This can be expensive if the product does not make it, or if the designer comes out with a number of untested products at once. It would be nice to have a system where a designer could preserve her rights in a number of designs, relatively inexpensively, while they were being tested in the marketplace.
A further disadvantage is that the PTO rules only allow one claim in a design patent. In contrast, an applicant for a utility patent can submit any number of claims (which are each paid for) in an effort to obtain a range of protection (from broad to narrow) for all aspects of the disclosed invention. The advantage for the utility patent owner is that if later-discovered prior art knocks out some of her broader claims, she can fall back on her narrower claims to salvage some protection.
A design applicant does not have that option, since one and only one claim is allowed. In order to obtain a range of protection, a design patent applicant can file multiple design patent applications, each disclosing a different aspect of the design, each having a single claim. This can become expensive, but is justified for important designs.
How much does it cost?
The Government filing fee (including the recently instituted “search fee” and “examination fee”) for a design patent application is $215 ($430 for a “large entity”) and the issue fee is $400 ($800 for a “large entity”), to which must be added the cost of formal drawings (usually about $400-$500 for a single embodiment), to which must be added the attorney’s fee for preparing, filing and prosecuting the application through to issuance. To find out our firm’s rates for preparing and filing a single, “regular” design patent application (1-2 embodiments, plus an Appendix) please contact us, as every case is different. Aside from filing the application you must also be aware there is a fee for the preparing and filing an Information Disclosure Statement, prosecution (if any - most of the design patent applications that we prepare and file “sail through” the PTO without objections/rejections from the Examiner), and attending to the issue fee payment.
Expedited prosecution will cost extra, since normally it requires a search of the prior art to be performed and a Petition to the Commissioner (filing fee $130) to be prepared and filed. Super-expedited prosecution (i.e., taking advantage of the PTO’s “rocket docket” procedure for design patent applications) requires payment of a PTO petition fee of $900. Fortunately, no maintenance fees need to be paid to keep a design patent in force throughout its 14 year term.
