Patents are a form of intellectual property (IP) that grant protection to designs and inventions in exchange for public disclosure. This is meant to benefit society, and inventors are promised exclusive rights over their creation for a certain period of time.
When it comes to patenting a design, there are several considerations to take into account. You must first ensure that your invention qualifies for a design patent. Having a solid understanding of design patents can help ensure that you’re suitably protecting your intellectual property rights.
What is a Design Patent?
Patents are granted for new inventions that fall under a patentable subject matter. These include machines, machine parts, formulas, tools and a variety of other items. Like all other patent types, a design patent must meet certain requirements including:
- Novel: Inventions must have substantial differences from other items that are public knowledge. “Public knowledge” applies to creations that have already been patented, written about in literature or have already been sold in commerce. This even applies to inventions that have been sold or patented overseas.
- Non-obvious: Inventions must not be obvious to an individual who is an expert in the field in question.
- Non-functional: The Design must serve an ornamental rather than functional purpose.
Designs focus only on the appearance of an item rather than its functionality. Additionally, the design must be entirely ornamental in nature. If a certain design is essential to the functionality of an invention, a utility patent will likely need to be registered. Many manufacturers file utility and design patent applications simultaneously to protect all elements of an invention. If an inventor files a patent application for the design of a product but not the utilitarian aspect, other companies may be able to use the non-protected elements.
Examples of design patents include:
- Apple patented the recognizable rounded corners used on their cell phones.
- SLP Performance parts has a patent on a specific type of automobile hood.
- Car companies can receive patents for the shape of their vehicle’s seats.
- The Statue of Liberty was granted a patent in 1879.
In each of these instances, no entirely new invention was created. Apple didn’t invent the cell phone, and Auguste Bartholdi didn’t invent statues. They were each still able to receive protection for the design features of their creations. When you patent a design, you get protection for appearance rather than functionality.
How to Patent a Design
The first step in getting a design patent is ensuring it’s actually patentable by conducting a patent search. After the search, you can proceed to filing the application with the United States Patent and Trademark Office (USPTO). Strict deadlines exist with patents so you should file your patent application at the earliest opportunity and before disclosing the invention to any third party.
After submittal to the USPTO, a patent examiner will review your application in its entirety. Your design patent will either be approved – at which point you’ll receive further instructions to complete the process – or the examiner will reject your request. If this occurs, you may be able to amend your application to correct the errors mentioned by the examiner.
If your application is accepted, you’ll need to pay a final issuance fee to complete the process. This is separate from the initial application fee. If you receive a final rejection after submitting an amended application, you have the right to appeal the decision.
Utility Patents vs Design Patents
There are very distinct differences between utility and design patents. The USPTO makes a point of mentioning that “utility and ornamentally of an article are not easily separable.” This means care must be taken when distinguishing between the two on a new invention with patentable functionality. Generally design patents protect the appearance of something whereas utility patents protect the way something functions.
How Long Does a Design Patent Last?
Most design patents grant exclusive rights over an invention for a term of 14-15 years. If anyone commits patent infringement during this time, the patent owner can demand they cease their actions and even bring forth patent litigation. Utility patent owners have the same right, and their term of protection generally lasts 20 years.
Any design patent that was filed prior to May 13, 2015 is valid for 14 years. Filings that took place after this date are protected for 15 years from the date of issue. This is due to legal changes that came forth after the Patent Law Treaties Implementation Act took effect.
Number of Claims
While utility patents typically have multiple claims, design patents often only have a single claim. Since the registration will only apply to an ornamental design, it’s that design alone that will be protected. Drawings of the design will be included along with the phrase “The ornamental design for (article of manufacture) as shown.”
If a company is attempting to patent a new car seat design, for instance, their claim would be “The ornamental design for a car seat as shown.”
Maintenance fees are one of the biggest differences between utility and design patents. Even though utility patents provide 20 years of protection, patent owners must pay renewal fees throughout the life of the patent.
The owners of design patents don’t have to worry about renewals since no maintenance fees are required during the term of the patent.
The term of pendency between filing a patent application prior to issuance or abandonment also varies greatly between utility and design patents. A design patent application takes around 19 months whereas Utility-based applications take an average of 33 months.
Design Patent Rejections
Patents are essential if you want to maintain exclusive rights over your intellectual property. Unfortunately, the registration process can be a complex endeavor that often results in rejected applications. This can equate to lost time, money and even the possibility of your design being used publicly. Getting it right the first time is essential.
The good news here is that design patents are approved at a much higher rate than utility applications, with approval rates can be as high as 80 percent. The design patent applications that are rejected are sometimes sent back due to the existence of prior art or incorrect drawings. This is why it’s important to have high quality images, so hiring someone skilled with patent drawings is key.
If a design patent application is initially rejected, applicants can submit a request for further examination or reconsideration. This will include any amendments. At this point, the examiner can either withdraw the rejection or make it final. Once final, you can file an appeal.
Design Patent Application Example
If you’re looking for a design patent application example that shows the “typical” submission, you’ll have a difficult time finding one. There are stark differences between each design-based application due solely to the fact that they’re very image-intensive.
The elements of a design patent application typically include the following:
- Preamble: You’ll state your name, your design’s title and provide a brief description of the intended use and nature of the article of manufacture in which your design will be used.
- Cross-References: Unless otherwise included in your application data sheet, list cross-references to any related applications. This is important if you’re also filing a utility application.
- Federal Research Statement: Disclose any funding or other assistance you received from the federal government for research and development.
- Description of Figure: Describe the images of your design which you have attached.
- Claim: List the claim in your application.
- Drawings: Include drawings of the design.
- Executed Declaration or Oath: Include a statement that – to the best of your knowledge – the design included in the application is original and of your creation. The USPTO provides examples here.
Design Patent Cost
In addition to avoiding maintenance fees, design patent costs are also much lower than their utility-based counterparts. Large entities must pay $760 for the basic filing fee. Small entities only need to pay $380. Micro-entities pay $190. There’s also an additional fee after approval. The final issuance fee is $560 for large entities, $280 for small entities and $140 for micro-entities.
To qualify as a small entity, the applicant must not have granted, conveyed, licensed or assigned their patent rights – or be contractually obligated to do so – to any large entity. They must also fall into one of the following categories:
- Nonprofit organization.
- Business with fewer than 500 employees.
- A person who has individual or joint ownership of patent rights.
Qualifying as a small entity grants a 50 percent reduction in the majority of patent fees. To gain micro-entity status – and thus receive a 75 percent reduction in most fees – you must qualify as a small entity and meet the following requirements:
- Have four or fewer prior applications filed.
- Gross income lower than the Gross Income Limit.
- No obligation to license or assign rights to an entity that exceeds Gross Income Limit.
For assistance in filing a design patent application, please contact us.