What is a design patent?
A design patent is a legal right that is available under the United States Patent Act. It is used to protect (to give you an exclusive right to manufacture and sell) a particular “ornamental design” of an “article of manufacture.”
When is a design patent useful?
A design patent is useful when the design of your product (think of the physical shape and the appearance of the product) is unique—others have not made your product in the same shape that you have, and you want to protect that shape so that others don’t use it for their products.
How is a design patent different from a trademark?
A trademark is an indication of who makes or sells a product. A design patent is not intended to identify to customers who made the product; it is only intended to protect the novelty of the design. So you can get a design patent even if your design doesn’t mean anything yet in the minds of your potential customers. In contract, you can get a trademark on a design even if it is not new, but customers think of you as the one who makes the products having that particular design or shape.
How is a design patent different from a utility patent?
A utility patent can be much broader in scope. You can protect almost any idea with a utility patent, including methods of performing tasks, new business methods, machines, chemicals, and so forth. Design patents are much easier to obtain than utility patents, but design patents can only be used for a novel design of a physical object. Another way to think of it is that the claims of a design patent consist only of figures—pictures. The claims of a utility patent consist of words—words that are very carefully crafted and extensively debated before the utility patent is issued.
How is a design patent related to an industrial design?
Many countries protect industrial designs through various legal systems. The United States does not have a system to protect “industrial designs” under that name. Instead, the U.S. uses design patents, which are more limited in what they can protect compared to the industrial design protection offered by many other countries. Even if you can protect something in another country through an industrial design registration, you might be unable to protect it in the U.S. because the laws for design patents are different.
How many designs can be included in a single design patent application?
Unlike in many countries (including in a European Registered Community Design or RCD), only a single design can be included in a U.S. design patent. Occasionally, small variations of a single design can be included in one U.S. design patent application, but this normally requires some discussion or negotiation with the patent examiner. In the end, the variations may need to be removed so that the design patent can be issued, because at a fundamental level, a design patent is only intended to cover a single design.
Can a design patent be based on a Registered Community Design (RCD)?
Yes. If a U.S. design patent application is filed within 6 months of the filing date of a Registered Community Design, then the U.S. design patent can claim priority to the RCD. But note that the filing requirements (especially the figures) are different for a U.S. design patent, so it’s important to leave enough time to prepare the design patent application properly.
What is the priority deadline for a design patent based on a European RCD?
The U.S. design patent application must be filed within six months after the filing date of the RCD in order to claim priority. Note that this is different from the 12 month priority deadline that applies to utility patent applications under the Paris Convention, or the longer priority dates under the Patent Cooperation Treaty. (But see also the comments on the Hague System below.)
Does the U.S. use the Hague System for industrial design protection?
No, but it soon will. A new U.S. law was passed in December 2012. Under that law, the U.S. will begin participating in the Hague System for protection of industrial designs. We anticipate that the new law will come into effect in late 2013 or early 2014. Once the U.S. starts using the Hague System, U.S. applicants can apply for protection of a design throughout Europe through a single application made through the U.S. Patent and Trademark Office. That application can contain multiple designs. Applicants from other countries will also be able to apply for design protection in the Untied States through the World Intellectual Property Organization (WIPO). But applications coming from other countries to the U.S. will be required to have only a single design (as discussed above). Foreign applications with multiple designs will be divided into multiple applications when they reach the U.S.
How long does design patent protection last in the United States?
Currently, a U.S. design patent lasts for 14 years. It cannot be renewed, and there are no maintenance fees or filings required to receive the full 14 years of protection. Once the U.S. implements the Hague System in late 2013 or early 2014, the term of protection will be changed to 15 years for newly issued design patents.
What are the filing requirements to submit a design patent?
- A design patent application must have at least 7 figures showing the design that you want to claim. The seven figures must be an isometric (3D) view, front, back, right side, left side, top, and bottom. Other figures may be added to show areas of the design that cannot be well understood from the basic seven figures. These figures must comply with USPTO drawing requirements, just as with a utility patent application. Photographs of the design cannot be used. The best course is to provide any mechanical drawings that you have (including Comptuer Aided Drafting (CAD) drawing files) and then use an experienced draftsman who knows the USPTO rules and can convert you drawing file or photographs into the proper format. This will avoid the patent examiner rejecting the drawings.
- If the inventor of the design is using a patent attorney, then the inventor must sign a Power of Attorney and a Declaration to authorize the attorney to act for the inventor.
- If the inventor is working for a company, or has licensed the design to a company, then the inventor will normally sign an assignment that transfers ownership of the design patent to the company.
Filing all of these documents—correctly prepared—at the same time with the initial application, will avoid delays and additional fees once the patent examiner begins reviewing the application.
The figure below shows the first page of an issued U.S. design patent.
Is a design patent filed in the name of the inventor or a company?
Unlike in many countries, design patents in the U.S. (and utility patents as well) must be filed in the name of the inventor—the real person or persons who developed the design. If the inventor is an employee or has licensed or transferred the design to a company, then an assignment document is filed with the U.S. Patent and Trademark Office. But the design patent application cannot list a company as the inventor. It must list a person or persons.
Who can file a design patent?
The inventor (or inventors) of a design can file the design patent application himself or herself. Any inventor can file a design patent application. There is no requirement to live in the United States or even have an address or office in the United States. If the inventor chooses, he or she can work with a registered United States patent attorney, who is authorized to act on behalf of inventors at the United States Patent and Trademark Office (U.S.P.T.O.). Foreign lawyers and U.S. lawyers who are not registered patent attorneys are not permitted to interact with the U.S.P.T.O. on behalf of clients, although they may assist by giving directions from the inventors to an authorized U.S. patent attorney.
How much does it cost to prepare and file a design patent?
The government fees at the U.S.P.T.O. have been increasing in recent years and more increases are expected. Currently, the government filing fees for a design patent are $530. If you are a “small entity” under the U.S. Patent Act (meaning you have less than 500 employees and you have not licensed or assigned your design to a company that has more than 500 employees), then the government fees are one-half the normal amount.
Professional fees for the assistance of an attorney and a draftsman will normally range from $1500 to $3000, depending on the complexity of the application.
Is a design patent application examined like a utility patent?
Yes, a design patent is examined by a patent examiner at the U.S. Patent and Trademark Office. Designs must be novel and non-obvious, just as utility patent claims. However, Office actions (refusals) are much less common for design patents. There is always the possibility of an Office action, with additional fees, but many design patents are filed and then issued without difficulty and with very little discussion with the patent examiner.
What other costs are required to complete a design patent?
Once your design patent application has been approved by the patent examiner, we say that the application has been “allowed.” At that point, you must pay an issue fee of about $1000 (or about $500 if you are a small entity); if you are working with an attorney, there will also be professional fees to manage this process so that your design patent can actually issue, be reviewed for accuracy, and then mailed to you.
How long does it take to get a design patent issued?
The time required varies, but you should plan on at least 12-18 months after filing until the patent is allowed. Once it is allowed, you can decide whether to pay the issue fee. If you do, then the patent will actually be issued and mailed to you within 1-2 months.
Who should I contact if I have more questions about U.S. design patents?
Contact Nicholas Wells at nwells@legendslaw.com. Mr. Wells has many years of experience with intellectual property matters and has advised clients in more than 50 countries. He works with experienced patent attorneys who have handled many design patents and provide very reasonable fees.