Design patents – overview of the application process in the United States

In a previous post, I summarized the process that an inventor should expect when applying for a United States patent application.  That post discussed the process for a “utility patent”, which is the typical patent that includes a detailed description of the invention and ends in a series of claims.

A slightly different process applies to design patents.  Unlike a utility patent, which uses a combination of words and drawings to describe the invention, a design patent speaks in drawings alone.

Subject Matter of Design Patents

The United States Patent and Trademark Office (USPTO) will issue a design patent for any original, ornamental design of an article of manufacture.  A design may include something that is applied to the article (such as a print, picture, or pattern), the shape or configuration of the article, or a combination of these items.

To meet the USPTO’s standard for originality, the design must be both new and non-obvious.  If the same design is found on a prior article in a similar field, it is not new.  If many elements of the design are found in a prior article, the USPTO may combine that article with other prior art and assert that your application shows an obvious combination of the prior art.

To be ornamental, the design must be limited to non-functional features of the article.

Procedures

To apply for a design patent, the applicant must submit wire frame drawings showing various views of the design.  The application may use a combination of solid lines and broken lines in the drawings.  Solid lines represent essential features of the design.  Broken lines represent optional features of the design.  Often, applicants will send their patent attorney a file with three-dimensional views of the drawing, or with shading and other elements that are not essential to the design.  In these situations, the attorney may work with a draftsman to prepare two-dimensional, wire frame drawings that meet the USPTO’s requirements.   The application will not describe the article other than to briefly identify what it is in the title and/or a single sentence.

After the patent application is filed, the USPTO will perform a prior art search and issue an Office Action stating whether it is allowing or rejecting the application.  If the first Office Action indicates that the USPTO is willing to allow the application, the applicant pays an issue fee.  The patent typically issues within 3-4 months after the USPTO receives the payment.  If the Office Action rejects the application, the applicant then responds with arguments and/or amendments, and the USPTO will issue another Office Action either allowing or finally rejecting the case.

According to April 2009 statistics, most design patent applications receive the first Office Action within 13 months or so of the filing date. According to the April 2009 statistics, about 40% of design patent applications are rejected in the first Office Action.

Non-U.S. Patents

If an applicant desires design patent coverage outside of the United States, the applicant may do so in many countries within 6 months of the filing date of the U.S. case.  The foreign application can then claim priority to — and get the benefit of the filing date of — the U.S. application.

Rights Available to a Design Patent Holder
A design patent gives its owner right to prohibit others from making, using, selling, importing, or exporting an article having the claimed design in the U.S.   This right begins when the patent grants.  Because of this, products with an expected short market life (such as two years or less) are often not candidates for design patent protection.  On the other hand, if an inventor expects to sell a product for many years, then a design patent may be useful. A design patent endures for a period of 14 years from its issue date.
NOTE:  See this post from May 2015 for an update to U.S. design patent procedures.

2 responses to “Design patents – overview of the application process in the United States

  1. I’m still not certain why more inventors don’t avail themselves of design patents. In many cases, the extra layer of protection they provide may prove worthwhile.

  2. Pingback: Distilling trade dress law: Sixth circuit rules Maker's Mark dripping wax seal is entitled to trademark protection : Franchise Law Update

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