A design patent protects the way a manufactured product looks but not the way it works or how it's structured. Businesses can protect their intellectual property (IP) rights over an original design by applying for patent protection. This should be done before entering the market to prevent a competitor from copying and profiting from your design.

When you are granted a design patent, you have the right to exclude others from using this design in personal and commercial applications. A design patent can patent everything from jewelry to packaging.

Design Patent Eligibility

To be eligible for patent protection, the design must also be useful. A method of creating art, such as a painting or photographic technique, cannot be copyrighted. The design must also be repeatable to qualify for patent protection.

Instead, the U.S. Patent and Trademark Office (USPTO) issues design patents based on a working object's ornamentation. The design of the object must be separable from its use and may not affect how the invention works.

First, you need to consider whether the design is eligible for patent protection. One or both of the following criteria must apply:

  • The surface of the item has unique ornamentation.
  • The shape or structure of the object has a unique design, such as the 1998 Apple iMac.

The design must also be:

  • Completely different from prior art
  • Not obviously derived from other designs
  • Visible when the product is engaged in its intended use

Digital design patents cover icons, fonts, and screen layouts for apps and software programs. However, these patents only protect designs when they are displayed on a screen, not in other forms.

Applying for a Design and Utility Patent

Getting a design patent doesn't prevent you from getting a utility patent, which protects the way an object works or how it is used. This use must be non-obvious and novel compared to earlier inventions in the industry (prior art). Like the design patent, the utility patent is a right of exclusion that prevents others from using, making, selling, or importing protected functions of the product (called claims). Utility patents provide stronger protection than design patents but require a longer, more costly application process.

You can also apply for copyright protection in addition to patent protection. This type of protection covers works of art including but not limited to sculptures, novels, paintings, and musical compositions.

Why Are Design Patents Important?

Protecting your intellectual property rights provides both financial and brand security for your business. It prevents others from profiting from your original designs, increasing your potential market share.

Because your design is part of your brand, use by competing companies can dilute your market impact. Depending on the audience for your product, you could lose thousands or even millions if another company steals your design.

Patent Infringement

Apple has often successfully defended its patents in court, most recently awarded more than $900 million when the federal court found that Samsung copied its design for the iPhone. Courts use the ordinary observer test, developed by the Supreme Court in 1872, to determine whether a design infringes on another design.

The jury must determine whether infringement exists by looking at the product in question compared to the design patent. If market confusion could potentially exist, infringement is likely. Expert testimony is not considered since these individuals can distinguish very specific details that may not be evident to the consumer.

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 With Design Patents

Companies sometimes make these 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 in 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, a design patent application costs $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 one year after the first filing for any country in the Paris Convention whereas design patent applications receive six 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 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.

Steps to File a Design Patent

Applying for a design patent doesn't take much time as long as you have searched for an existing patent and found a lawyer to help you draft your application. Patent Drawings The USPTO asks for drawings from all sides of the object:

  • Left
  • Right
  • Top
  • Bottom
  • Front
  • Back

The only exception is when two or more sides look the same.

This part of the application is the drawing disclosure. The drawings should include surface shading which helps show the object's contours. Also, parts of the drawing that don't apply to the patent should have broken, not continuous, lines. Broken lines are most commonly used to show the environment around the design and to define the bounds of the design.

Since these drawings are the most important part of the design patent application, you may want to consider paying a professional around $600 for high-quality drawings.

Patent Claim and Details

Before you fill out your design patent application, title your product. Make the title as specific and descriptive as you can. Most titles have only one or two words that label the design based on consumer words, such as "chair," "wind chime," or "fish tank."

Utility patents need more text than design patents. You need to make a simple claim and state what you have designed. You can also include short statements that help describe sections of your application.
Here's an example:

  • You might describe each drawing view in a few words or use figure descriptions.
  • Figure descriptions go with your drawings, and they describe what viewers see in the drawings.
  • You can use words like "Figure 1 is a bottom view of my suspended lampshade design."

You can include a preamble in a design patent. A preamble is a simple statement that says that you're the inventor of the submitted product. Also, write a sentence or phrase that briefly describes the product and how you want it to be used. You'll also need a single claim, another simple statement: "The ornamental design for sandals, as shown and described."

You also need to note any cross-references to patent applications related to your product, unless you already have them in your application. You must also note whether you relied on any federal research or development to create your invention.

Patent Application

You can apply for a patent electronically at the USPTO website. Applying online is the easiest way to get your patent application into the USPTO's system.

If the application is passed through, the USPTO will send a notice of allowance to the applicant's patent attorney. Similar to utility patents, an issue fee is also required to issue a design patent but is typically a third of the cost.

Design patents help you protect your intellectual property by helping you to protect the way a product you have created appears. Now that you know about design patents, post your legal need so that an experienced lawyer can help you with the design patent process.