Introduction to Design Patents

If you invent a new design then you may be eligible for a design patent!

In a nutshell, a design patent is a low lift way to protect your innovative new design.  We sourced common questions about design patents and answered them here.  

The inventor of “any new, original and ornamental design for an article of manufacture” is entitled to a design patent covering the invention.  

Design patents are distinct from utility patents because they cover only the articles ornamental design (rather than the article’s function).

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Design Patents Overview

Design patents and utility patents are both types of non-provisional patents that carry the all important right to stop competitors from making and using your invention.  The requirements of 1) novelty; and 2) non-obviousness apply to design patents the same as utility patents. 35 U.S.C. § 171.

Here are the main differences between design and utility patents:

• Design patents have a single claim. Patent claims define the scope of an invention. Utility patents have at least one claim and likely between 3 and 20.  Design patents, by contrast, have only one claim. Note: different embodiments of a single design concept may be filed in one application. Thus, embodiments that simply scale a design up or down can be filed in a single design patent application.

• The Drawings define the scope of the design patent claim. The drawings are the critical component of a design patent since they are the complete visual description of the design.  Drawings must be in black ink on white paper absent special circumstances (see 37 CFR §1.84).
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Term. The term for a design patent is 15 years from the date that the design patent is granted. 35 U.S.C. §1 73. The term was changed from 14 years to 15 years in 2015. Note: after the patent term expires, it may be possible to obtain a trademark covering the trade dress of the article of manufacture. For example, Coca cola was granted Design Patent No. 48,160 covering the coke bottle shape in 1915. Coca cola later registered a trademark over the trade dress for the “coke bottle” in 1977. Although the legal requirements for registering a trademark covering a product’s trade dress are different, it is a mechanism for extending the life and scope of protection well beyond 15 years.

Design patent infringement. A design patent is infringed if an ordinary observer would think that the accused design is substantially the same as the patented design when the two designs are compared in the context of the prior art. Egyptian Goddess, 543 F. 3d 665 (Fed. Cir. 2008). In 2008, a jury found that Samsung had infringed Apple’s design patent covering the iPhone and awarded Apple a staggering $296 million in damages. Thus, a design patent is a powerful tool and can indeed be a cornerstone of a well-conceived intellectual property portfolio.

Converting your design into an asset

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You can convert your design into a tangible intellectual property asset and grow your portfolio by securing a design patent.  

The first step for getting a US Design patent is filing a complete application with the United States Patent and Trademark Office (USPTO) and paying filing fees.

According to the USPTO’s most recent fee schedule as of this writing, total fees to file a design patent are $760 for large entities, $380 for small entities and $190 for micro-entities.  

Micro-entity filers get a 75% reduction in fees!  To qualify for the micro-entity certification, the applicant must meet the following requirements:

• Qualify as a USPTO-defined small entity.
• Not be named on more than four previously filed applications.*
• Not have a gross income more than three times the median household income in the previous year from when the fee(s) is paid. For 2011, the most recent year that data is available, the median income was $50,054.
• Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor

According to a survey of practitioners, median attorney’s fees for a US design patent application in 2020 were $1500.

Your application will be processed, assigned to a patent examiner to be examined, and if the application passes muster, your application will be allowed.  Once your design patent application is allowed, an issue fee of $700/ $350/ $175 depending on your entity size, is due.  Once the fee is paid then the USPTO issues your Design Patent Certificate for your invention.  Additionally, and unlike utility patents, this issue fee is the last fee that you will have to pay to the USPTO to maintain your design patent!  

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Once your US Design patent issues, your idea’s metamorphosis into an intellectual property asset is complete!  

As of this writing, the US design patent application takes, on average, about 20.4 months.  

US Design patent applications are never published – not even abandoned applications.

You may also elect to protect your design internationally under the Hague System for the International Registration of industrial designs.  

Is a design patent right for your idea?

You should strongly consider applying for whatever non-provisional patent protection you can get, whether design, utility, or both! Design patents are a reasonably low-cost tool to add assets to your intellectual property portfolio.  They are perfect for inventions where the innovation is more in the design and less in the way the invention works.

You may be ready to file an application for a design patent if:

• your invention solve a new problem or solve a known problem in a new way;
• The essence of your invention is a design;
• The design is embodied in an article or in a tangible form, e.g. graphical user interface.

Tinch Law helps inventors get design patents covering their inventions! You can check out our packages here.  You can also try our idea assessment tool or book a consultation to discuss your idea further here!

Sources:

https://www.uspto.gov/dashboard/patents/design.html

https://www.wipo.int/hague/en/faqs.html

Manual of Patent Examining Procedure Chapter 1500

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