Design Patent Application: The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing the design patent application.  I’ll explain what it is, what to know before filing, and why it is an important tool for the protection of a design.

What a Design Patent Application is:

A design patent application is a patent application that is filed to protect a novel design, i.e. it protects the unique ornamental characteristic(s) displayed on/by a utilitarian (useful) article. The unique characteristic of the article could include its original surface ornamentation, the overall shape, or both.  In contrast, a utility patent application protects only the functional aspects of a utilitarian invention, instead of its appearance.

A design application does not protect an idea/invention; it protects only the ornamental design of what is depicted in the patent drawings.  No variations of the design are protected. Any variations should be protected by filing separate design patent application(s). Multiple design patents combine to make a patent portfolio capable of thwarting copy-cats attempting to design around a patented design.

Similar to a utility application, a design patent application must undergo examination (patent prosecution); and ultimately, must be allowed by a patent examiner, before the application can be issued as a design patent.  There are specific requirements that must be met for a design application filing to be accepted and for the invention itself to qualify for protection.  The design patent application filing requirements are defined by the United States Patent and Trademark Office (USPTO).  

In addition to the design application filing requirements, to qualify for patent protection, a design must be both new and non-obvious.  It must also be a design of a utilitarian article and it must not affect the function of the article. If the design is dictated by the way the invention works, then the invention is utilitarian and would instead be protected by filing a utility patent application.  

It is possible to file for and patent both the utilitarian and design aspects of one invention.  This type of dual protection is sought for the majority of products on the market. There is a rule against double patenting, so it is imperative that protection for the same aspects of one invention isn’t sought in two different applications.  A patent attorney can assist in identifying what aspects of an invention should be filed for protection in a utility vs. design application.

What to Know Before Filing:

Filing a design patent application, as with all patent filings, does not guarantee a patent will be issued.  To become a patent worthy of issuance, a design application must undergo patent prosecution. During this process, a patent examiner compares the as-filed design to the available prior art, i.e. the design patents previously issued by the USPTO.  

To prepare for this step, the best approach is to request a patent attorney to conduct a preliminary patentability search and opinion before the patent application is filed. If the search has positive results, the application can be pursued with more confidence, but it does not guarantee that a patent will be issued.  It should be noted that even if the functional aspect(s) of the utilitarian article are already patented, it is still possible to receive a patent on a new design.

After a thorough search, the next step in the process is filing the patent application with the USPTO.  It is important to understand that the U.S. is currently under the “first-to-file” rule. This rule proclaims that the first inventor to file for an invention with the USPTO has claim to the patent rights. With the assistance of an experienced legal team, you can secure “patent pending status”  by filing the required documentation inline with the rules set out by the USPTO.

Once filed, the “pre-examination phase” begins, in which the application is reviewed by the USPTO for its adherence to the filing-formalities.  After an application passes this phase, it is placed in a que with other patent applications to await formal examination by a USPTO patent examiner.  It can take 6-9 months for a design application to begin the examination phase. This may seem like a long time, but bear in mind that it is significantly faster than examination for a utility patent application, which can take 18-24 months.   

The timeline for filing foreign applications is also shorter than the deadline imposed on utility applications.  To claim the benefit of a design application filing date, applications seeking protection in foreign countries must be filed within six-months of filing the U.S. design application.  Additionally, a U.S. application can not claim the benefit of a foreign design application filing date. If previously filed or patented in another country, a design would need to be re-filed in the U.S. and receive and new filing date assigned by the USPTO.

Unlike utility patent applications, design applications are never published and made available to the public.  If the application is approved by the patent examiner, examination will be closed, and the patent will be allowed.  With allowance, an issue fee is due before the application can be officially issued as a patent. An issued design patent does not need to be maintained with the payment of a maintenance fee to the USPTO, unlike utility patent applications.  Judged from the date it is issued, the term of a design patent is currently 15 years. Design patents filed before May 13, 2015 have a shorter term of 14 years from issuance.

It is important to understand that an issued patent does not grant the patent owner the right to make, use, or sell the patented invention.  A patent attorney must conduct a freedom-to-operate search and analysis in order to determine this ability.  Patent protection alone only grants the patent owner the exclusive right to prevent others from using and marketing the claimed invention.  

Why a Design Patent Application is an Important Tool:

A design patent application is an important tool, because the resulting certified design patents allow the patent owner exclusive rights to protect their invention.  Design patents specifically are great for helping to prevent knock-offs and counterfeiting. With a design patent, you can establish market credibility by thwarting copiers.  Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, design patents are not only important to the inventors or companies that own them, but they are also invaluable to society, which prospers from them.  

Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and is just a call away.  We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a design application or other patent applications.