Patents provide protection to inventors of new, useful, and non-obvious products or designs by preventing others from using, making, or selling the invention for a certain amount of time after the patent is issued. There are three main types of patents issued in the United States – a design patent, a utility patent, and a plant patent. Design patents protect the ornamental appearance of products, distinguishing them from utility patents that focus on functionality. Here, we want to discuss what a design patent is and how a person can go about filing for a design patent to protect themselves.
Definition and Scope
A design patent is a type of intellectual property protection that covers the ornamental design of an article of manufacture. Unlike a utility patent, which protects the functional aspects of an invention, a design patent protects the visual appearance of a product. This means that a design patent safeguards the unique aesthetic features of an item but not how it works.
According to 35 U.S.C. 171, a design patent may be granted to anyone who has invented a new, original, and ornamental design for an article of manufacture.
The term “article of manufacture” encompasses a wide range of products, from furniture and jewelry to computer icons and packaging. Essentially, if the design is new, non-obvious, and purely ornamental, it can be protected by a design patent.
The Basics of a Design Patent
US patent law allows for a person to be awarded a design patent if they have invented a new or non-obvious design for an article of manufacture (the word manufacture here is used specifically to mean something that is manufactured to be used or consumed). A design patent provides protection only for the ornamental appearance of an article but not for any of the functional features or structural features.
Articles of manufacture can embody both functional and ornamental characteristics, and design patents specifically protect the ornamental aspects. For the purposes of a patent, the design of an object will consist of the visual ornamental characteristics embodied in the object or applied to the object of manufacture. Because design is manifested in appearance, this means that a design patent can relate to the:
- Configuration or shape of an article
- Surface ornamentation applied to the article
- Combination of both the surface ornamentation and the configuration of the article
Types of Designs and Modified Forms
Design patents can protect various types of designs, each contributing to the visual appeal of an article of manufacture. These include:
- Ornamental Designs: These designs are created solely for their visual appeal and do not serve any functional purpose. They enhance the aesthetic value of the product.
- Surface Ornamentation: This refers to decorative patterns, textures, or designs applied to the surface of an article. Examples include intricate carvings on furniture or unique patterns on fabric.
- Modified Forms: These are variations of existing designs that have been altered in some way. For instance, a company with a design patent for a specific chair design might also obtain a design patent for a modified version of that chair, featuring different ornamental elements.
By protecting these types of designs, design patents ensure that the unique visual characteristics of a product are legally safeguarded.
How Long Does a Design Patent Last?
A design patent does not last forever. When a person obtains a design patent from the US government, they will hold the patent for a term of 14 years from the date the patent is granted. As opposed to a utility patent, there are no fees necessary to maintain a design patent once it is in place.
The Difference Between a Design and a Utility Patent: Functional and Ornamental Characteristics
There is often confusion about the difference between utility and design patents. As we mentioned above, a design patent will only include the way the object looks. While a design patent may include elements related to “how” the object works simply by the nature of the shape of the object, this does not give the same protection as a utility patent. Both design and utility patents provide legally separate protection for different aspects of an invention.
Any person wishing to protect the way an object or manufacturer does something, the composition of the object, or the underlying machine will need to obtain a utility patent as well. It is not uncommon for inventors to obtain both design and utility patents at the same time, though these two types of patents expire at different periods.
An article can simultaneously embody both utility and ornamental appearance, making it eligible for both types of patent protection.
Filling Out a Design Patent Application with Design Patent Drawings
Any person who wishes to obtain a design patent will need to navigate the design patent application process by filing an application with the United States Patent and Trademark Office (USPTO). When you begin the patent process, you will see that you can obtain either a provisional patent or a non-provisional patent.
High-quality design patent drawings are essential, as they must comply with specific rules and showcase the ornamental features of the invention.
A provisional patent will protect the applicant for a period of one year as they work to figure out the specifics for their design. A non-provisional patent application will officially start the process for the USPTO to determine whether or not the design is eligible for patent protection, establishing the filing date.
The subject matter of a design patent application must be clearly defined to ensure it meets the requirements for patentability.
Design Patent Fees and Maintenance
The cost of obtaining a design patent can vary based on the type of application and the size of the entity filing it. Generally, the fees for design patent applications include:
- Filing Fee: Ranges from $100 to $500, depending on the applicant’s status (e.g., small entity, micro entity).
- Search Fee: Typically between $100 and $500, this fee covers the cost of the USPTO conducting a search to ensure the design is novel.
- Examination Fee: Also ranging from $100 to $500, this fee is for the USPTO’s examination of the design patent application.
- Issue Fee: Once the design patent is granted, an issue fee of $500 to $1,000 is required.
One significant advantage of design patents is that they do not require maintenance fees. Once granted, a design patent is valid for 15 years from the date of issuance, with no additional fees needed to maintain its validity.
Common Mistakes and Best Practices
When filing for a design patent, applicants often make several common mistakes that can jeopardize their chances of obtaining protection. These include:
- Failing to Conduct a Thorough Search of Prior Art: Before filing, it’s crucial to search existing patents and publications to ensure the design is novel and non-obvious.
- Failing to Clearly Define the Scope of the Design: The application must precisely describe what aspects of the design are being claimed.
- Failing to Provide Sufficient Drawings and Descriptions: Detailed and accurate drawings are essential to fully disclose the design and its ornamental features.
To avoid these pitfalls, applicants should follow best practices such as conducting a comprehensive prior art search, clearly defining the design’s scope, and providing detailed drawings and descriptions. These steps can significantly enhance the likelihood of obtaining a design patent.
Design Patent Infringement and Enforcement
Design patent infringement occurs when an unauthorized party makes, uses, or sells a product that is substantially similar to a patented design. To enforce a design patent, the patent owner must demonstrate that the infringing product closely resembles the patented design to the extent that an ordinary observer would be deceived.
There are several ways to enforce a design patent, including:
- Filing a Lawsuit in Federal Court: Patent owners can initiate legal action against the infringer in federal court to seek damages and an injunction to stop further infringement.
- Sending a Cease and Desist Letter: This formal notice informs the infringer of the patent owner’s rights and demands that they stop the infringing activities.
- Filing a Complaint with the International Trade Commission (ITC): The ITC can investigate allegations of patent infringement and issue exclusion orders to prevent infringing products from being imported into the United States.
By taking these enforcement actions, design patent owners can protect their rights and prevent unauthorized use of their patented designs.
Protect Your Design with Callahan & Blaine
If you’re looking to safeguard the unique appearance of your product, understanding design patents can be a critical step in your intellectual property strategy. At Callahan & Blaine, we offer seasoned guidance in securing and defending design patents, distinguishing ourselves with over 40 years of complex litigation experience and a track record that includes some of the largest settlements in California history. Our team is well-versed in navigating the intricacies of patent applications and enforcement, ensuring that your creative work receives the protection it deserves.
With our firm, you’ll have direct access to senior trial lawyers experienced in high-stakes cases. We’re here to help you every step of the way, from ensuring your application is complete to representing you in enforcement actions. Reach out to us to protect your designs with confidence. Call (714) 241-4444 or visit our contact form to get started.
