A design patent protects the ornamental presentation of an article or product. This can include the product’s configuration, shape, and/or surface ornamentation. Design patents are limited to the appearance of the product and do not cover structural or functional features or innovations. A design patent in the United States has a term of 15 years from Patent Office issuance.
Similar to a utility patent application, a design patent application undergoes review and examination by the U.S. Patent and Trademark Office (USPTO). In order for a design patent application to issue as a design patent, the USPTO must find that the design is novel (new) and non-obvious when compared to similar prior existing product designs.
The scope of protection for a design patent is defined by the figures in the design application. Therefore it is extremely important that the drawings of the product for which design protection is being sought be prepared in accordance with Patent Office guidelines. This typically requires retaining a draftsman that is familiar with these guidelines, that is someone who routinely prepares drawings for design patent applications.
Developing a strategy for seeking design patent protection can be critical. This may include modifying the patent drawings to include multiple embodiments or variations of the claimed design. This may also include depicting variations in the size, shape, or proportions of the design. Also, by putting certain unimportant features in dashed or hidden lines in the drawings, the scope of protection being sought by the design filing may be enlarged.
Design patent protection is available for various types of products. Product examples of products include: eyewear, footwear, totes and handbags, furniture, product packaging, lighting, and even screen shots from electronic displays.
In contrast to the examination system in the United States, most foreign countries have registration systems for obtaining design protection, which are often referred to as an industrial design or a community design. This means once the paperwork and drawings are found to meet the formality requirements of the particular foreign jurisdiction, the design will become registered. Substantive examination, or the comparison of the design for which registration is being sought with prior existing designs, typically only occurs if and when the registered design is being asserted against an infringing party.
Foreign filing can either be done on a country by country basis or by filing an international design application. The latter is done utilizing what is referred to as the “Hague System for the International Registration of Industrial Designs”, which provides for registering a design in over fifty countries through the filing of a single international application. Any foreign filing, whether it be an individual country filing or a filing under the Hague system, should be done within six months of any earlier US filing date in order to claim priority benefit of the U.S. filing. Moreover, in order to avoid being statutorily barred to seeking design patent protection, the foreign filing (or the priority U.S. filing) should be made prior to any public disclosure or commercial use of the design.
From a practical standpoint, design patents can be a much faster way to obtain patent protection. Examination in the United States typically takes place within a year, in contrast to the two to three years (or more) of waiting for a first action in a utility patent application. And expedited examination of a U.S. design application is also available. For expedited examination, in addition to the normal requirements for filing a design application, the application must also include: 1) a petition requesting expedited examination, 2) the government fee of $900 ($450 for small businesses and individuals) and 3) the results of a prior art search. If an expedited design patent application is properly filed, examination will most likely take place within a few months and issuance of a design patent will usually occur within six months.
Design patents provide many advantages as compared to utility patents. Design patents are generally less expensive and have no maintenance fees if the design issues as a patent. The allowance rate is significantly higher for design applications and design patents can generally be obtained much quicker than utility patents.
Importantly, design patents provide the same marketing advantages as utility applications. Once a design application is on file, the product can be labeled as “patent pending’ once a design patent has issued, the marking can be changed to “patented.”
From a legal standpoint, design patents can be a very good tool for preventing or stopping knockoffs. They can also be used to prevent importation of infringing products. On the other hand, design patents offer limited protection as compared to utility patents since design patents cannot protect against third party copying of a functional or structural innovations, unless the innovation includes a configuration or shape that was also copied.
Design considerations are playing an ever increasing role in the marketplace. Design patents can play an important role in protecting design innovations and help reduce competition, whether they are the only available intellectual property protection or are part of an overall legal strategy.