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Simple Guide to Understanding a Design Patent

What is a Design Patent?

A design patent is a type of patent that protects the way a manufactured product looks. However, this patent doesn’t protect the way a product works or the mechanical structure. Design patents can help protect businesses and their intellectual property rights by creating design protection and allowing the use of adding “patent pending”, “patent issued”, or “patented design.”

New designers and makers who want to protect their future designs should consider applying for design patents before bringing their products to market so a competitor does not knock off your design and sell your design to the public.

A design patent is a right of exclusion, meaning patent holders have the right to exclude others from using their designs in commercial or personal works. Finding the right attorney with the right knowledge is crucial, and it may be best to find one in your city. Whether you find an IP attorney in Los Angeles who understands fashion industry designs compared to one in San Francisco who might understand software. You can find design patents everywhere that protect the way products like jewelry and soft drink containers look.

You Can’t Get a Design Patent for Something That People Can’t Use

Although design patents don’t cover the way a product works or functions, you can’t get a design patent for an item that people can’t use. For example, you can’t apply for a design patent for a product that you get from a method, such as a photograph you take or a piece of art you paint. Additionally, the design itself needs to be repeatable.

Instead, the U.S. Patent and Trademark Office (USPTO) issues design patents based on a working object’s ornamentation. If you make shoes, you might get a design patent for the type of design you give to the strap on a pair of clogs.

You Can Get a Utility Patent, Too

Getting a design patent doesn’t prevent you from getting a utility patent. A utility patent protects the way people use something or how a product works and must be novel, useful, and nonobvious. It also prevents others from making, using, selling, or importing into the United States any product with functions covered by the claims in the patent regardless of the appearance and design. Historically, utility patents have been stronger and more popular than design patents.

If you’re making something that’s unique in design and function, you might want both patents as a complete patent strategy. Design patents can be somewhat easier to get than utility patents, take a shorter amount of time, and they’re also less expensive to receive.

Based on very old studies on design patents, using rules potentially too old to be relevant, it has been suggested that 7 out of 10 design patents litigated were invalid. However, if there is a large amount of design patents, there can still be a lot of protection for inventors.

You may also want to consider getting a copyright if you believe the object may be a work of art such as a painting, song, book, or sculpture or if the object is a physical article that may be trademarked.

Why Are Design Patents Important?

Protecting your intellectual property rights should be a top priority. Design protection allows you to continue to make a product while preventing other companies from copying the design. You can keep more market share for your product because you can protect your product’s unique appearance.

Additionally, many companies are known based on their designs. Design is part of your brand, and you don’t want other companies to water down your brand reach. High-end fashion designers could lose millions of dollars in revenue without design protection because anyone else could create the same design aesthetic.

When Do You Need to Get a Design Patent?

You need to have a design you can protect to successfully file for a design patent. Here are some points you need to think about:

  • Ornamentation: The surface of the product features distinct ornamentation.
  • Structure: The design bears an exact structural design.
  • Both Ornamentation and Structure: The product is unique in both ornamentation and structure.

In order to quality for a design patent the object must be:

  • New with no identical design that exists in prior art
  • Satisfy the ornamental standard
  • Nonobvious from existing design(s)
  • Must be visible to the user when the product is in use
  • Original to the inventor(s).

There are also various situations when you may want to consider digital design patents. App developers often patent their icons to keep other developers from using them. Companies can also patent screen layouts and fonts.

Interestingly, the first digital design patent given in the United States gave intellectual property protection for a font. However, keep in mind that digital design patents only protect the design when they’re shown on a computer screen.

Design patents can also be useful at preventing knock-offs and counterfeits for high fashion items that can grow popular very quickly.

Points for Applying

If you feel that your product satisfies the points above, you can apply for a design patent. Here are a few important points to keep in mind:

  • While you won’t find a set due date when applying for design patents, you’ll want to apply for one as soon as you can. The USPTO gives patents on a first-come, first-serve basis. If another business applies for a design patent that you want, the USPTO will reject your application.
  • Don’t waste time and money. Do a patent search and look for other patents like your own.
  • Make sure that your product is truly unique so that you can avoid people or businesses claiming you infringed on their design patents.

Examples of Design Patents

Companies often get several design patents as they continue to create new products.

 

Patentable Designs

 

The 1998 iMac’s shape acts as an example of a unique design. The iMac’s trapezoid appearance sets it apart from its competition, which became a key part of its success. Automakers also get design patents for many aspects of the vehicles they design. Unique hood ornaments have become part of the auto culture. Car enthusiasts love them, and they help automakers brand their products.

 

Patent Infringement

Apple has won patent infringement lawsuits against companies that copy its many unique designs, including the iMac CPUs and the iPhone. If you have a design patent and another company infringes upon your patent, you can sue for damages.

In 1872, the U.S. Supreme Court came up with the “ordinary observer” standard in a case about a silverware handle design. In 1984, this decision was reversed when the Federal Circuit determined that the design patent had to meet the “ordinary observer” standard and show the accused product adopted the novel point of the patent design. However, since September 22, 2008 the 1984 ruling was reversed and the Federal Circuit maintained that the “ordinary observer” test should be the only test for design patent infringement in Egyptian Goddess v. Swisa.

The “ordinary observer” test asks the jury to look at the infringing product, look at the design patent, and determine if there is infringement. Previously the jury focused only on the point of novelty and not the entire drawings. Overall, the design patent became stronger since it asks an “ordinary observer” to just determine if the infringing product is a copy of the design patent.

Think about it this way: Would consumers look at a product and think that they’re buying the original? The legal system uses “ordinary observers” as a benchmark instead of experts who are more likely to spot very fine details.

With the low cost of the design patent and increased strength from the 2008 ruling, some patent attorneys have been recommending that design patents be strongly considered when filing for a utility patent.

When Does a Design Patent Expire?

Design patents last for 15 years if filed on or after May 13, 2015 or 14 years if filed before May 13, 2015 with the date starting from when you receive the design patent.

If your design patent expires, you can no longer protect your product’s design. You can always ask to get an expired patent reinstated as long as no one else has claimed your design. However, a utility patent has a 20-year period if filed on or after June 8, 1995 attached to it with increasing maintenance fees at 3.5, 7.5, and 11.5 years after the issue date to keep the patent out of public domain.

Common Mistakes

Companies sometimes make mistakes when they apply for a design patent.

  • Not doing patent research: You’ll waste money trying to apply for a design patent when someone already owns the intellectual property rights to the design.
  • Not protecting how the product works: If your product is unique in the way it works and its design, you need a utility patent. You can file a provisional utility patent, which also lets you use the words “patent pending” when describing your product, until you file for a full utility patent.
  • Not including specifics: Unlike utility patents, design patents depend on drawings. If your drawings don’t have enough detail in them, the USPTO might turn down your application.
  • Not speaking with a lawyer: A lawyer can help you file a design patent. Look for a lawyer who has experience with intellectual property.

Frequently Asked Questions

  • What does a design patent cover?

The design patent covers a product’s appearance or its unique structure. The protection is more or less limited to exactly what is in the design patent drawings. This means that the inventor should file a new design patent if there is even a slight unique variation since it may not be covered in the original design patent.

  • How long does the design patent application process take?

In most cases, the USPTO gives out design patents within 12 months. It is possible that it can be awarded in 6 to 9 months. In contrast, it may take 3+ years to get a utility patent.

  • Can there be similar design patents?

Remember, a design patent covers an exact appearance and unique structure. Similar patents can be present, but a company can’t infringe on a design patent that already exists by making something that closely looks like a competitor’s product. Similar design patents can also exist for non competing products.

  • Should you sue over design patent infringement?

You can sue another company for damages if that company steals your design. You can also send a demand letter that asks the company to pay you a license fee.

  • What is a patent reissue?

A patent reissue takes place when you make changes to your original design patent application. A reissue is usually done with updated patent drawings.

  • How much does a design patent application cost?

As of January 2017, the design patent cost just for the application is $180. However, the USPTO charges small businesses only $90, and smaller businesses pay only $45.

  • What are some additional differences between a utility and design patent?
    • Design patent applications have only a single claim whereas utility patents applications can have multiple claims.
    • Filing for multiple design patents is common since even the smallest amount of variation in designs should have a new design patent whereas different utility patents need to be more distinct. However, you do want to avoid double patenting which is when a single person patents multiple patents for the same exact invention.
    • Foreign priority may be in effect for utility patent applications 1 year after the first filing for any country in the Paris Convention whereas design patent applications receive 6 months.
    • Design patents cannot claim priority to a provisional patent application
    • A Request for Continued Examination (RCE) may only be filed for utility or plant patent applications. A Continued Prosecution Application (CPA), which has a similar function as RCE, may be filed for a design patent application, but not for a utility application.
    • If a utility patent application is filed on or after November 29, 2000, it must be published whereas design applications are not published.
  • Can there be design patent and trademarks protection on the same product?
    • Yes, however, it is important to note that in order to infringe on a trademark, the product must cause confusion, mistake, or deception with the public. The courts may also look into the buying habits of the public and sales methods of the business. In contrast, a design patent just needs to pass the “ordinary observer” test above.

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