Design Patents – Yes They Are Available in the United States and Yes You Should Consider Filing for One
When most people talk of patents and protecting their inventions they are implicitly talking about “utility patents,” which protect the way an invention works. However, there is an entirely different class of patent, the “design patent,” that United States patent law recognizes and that those seeking a patent should also consider.
The Differences…
First, the differences…As noted above utility patents protect the way an invention functions. In contrast, a design patent never protects function. A design patent protects the look of a design, the appearance of a design, i.e. the ornamentation of the design.
However, the protection afforded by the design patent is much more limited than the protections afforded by a utility patent. For example, with utility patent infringement, because the patent protects the invention’s functionality, accused infringing devices are often found under the “Doctrine of Equivalents” rationale, i.e. the accused infringing device may look substantially different than the patented invention but is nevertheless a functional equivalent of the patented invention and thus infringes the utility patent. The utility patent protection can be broad indeed.
In contrast, with design patent infringement the patent only protects against literal infringement, i.e. the protection only extends to accused devices which look the same as the protected design. With design patent infringement there is no “Doctrine of Equivalents.” But if you are in an industry where piracy and direct copying pose a threat, as opposed to threats from competitor innovation, a design patent may offer the necessary level of protection.
While the protection afforded by a design patent are more limited, in Egyptian Goddess v. Swisa, the Federal Circuit adopted a favorable infringement test, of that of an “ordinary observer,” which at least makes it easier for a jury to find literal infringement, 543 F.3d 665 (Fed. Cir. 2008).
The Benefits…
If one had to choose between a utility patent and a design patent, then yes the utility patent is the superior choice. With such limited protection, why would one want to obtain a design patent? In reality there are several reasons why one would need to or want to obtain a design patent.
The first reason is one of immediate financial constraints. Often inventors are financially constrained and they may not have the present financial means to pay for a full-blown non-provisional patent application to pursue a utility patent, both in terms of cost to a patent attorney and in terms of filing fees with the United States Patent and Trademark Office (USPTO). Design patent applications are both more affordable and easier to obtain than a utility patent.
The design patent application is simpler, which translates into lower attorney fees. For example, there is only ever one claim in a design patent application, and that one claim is almost always written in the exact same formal language as, “the ornamental design [of some object, e.g. a tabletop], as shown and described.” So the cost of claim drafting is negligible in design patent applications. Rather, the heart of the design patent application specification is the drawings themselves, which need to show every aspect of ornamental design. Because the drawings are the key to the design patent application, generally the drawing’s cost is the most significant aspect of preparing and filing the design patent application.
Additionally, the USPTO fees are lower with a design patent application compared to a utility patent application. For example, the USPTO design patent application filing fees are: $180, $90, and $45 (for large entity, small entity, and micro entity). In comparison, the filing fees for a utility patent application are: $280, $140, and $70 (for a hard-copy filing). (Fees verified on November 4, 2013). But like a utility filing, there are also fees associated with searching and examining the application, where the corresponding design fee is lower than the utility fee. And because the design application itself is simpler and the patentability requirements are simpler, the USPTO prosecution of the filed application is simpler, which translates into lower attorney fees in having to respond to USPTO Office Actions on the design patent application.
The fact that design patents are more affordable and easier to obtain, also results in another benefit: design patents are generally issued much more frequently than utility patents. For example, it is not unusual for a utility patent to take three years or longer to issue from the time it was filed; whereas, it is not unusual to have a design patent issue in about eight months.
Additionally, because the utility patent and design patent protect different aspects of an invention, they are not mutually exclusive, meaning an inventor may pursue and obtain both a utility patent and a design patent on the same invention. Which per the above benefit of faster issuing times, gives the inventor some patent protection relatively quickly while the utility application is being prosecuted. Further, design which may be protected by a design patent, may also have concurrent copyright protection, and sometimes even concurrent trademark protection.
However, with respect to first filing for a utility patent and then subsequently filing for a design patent, the filing of the utility patent may start the clock with respect to statutory bars under 35 USC 102. For example, if your drawings in the utility filing depict your design, then your utility patent application filing will be an enabling disclosure with respect to your design, meaning under 35 USC 102 you only have a specified window of time in which to file the design patent application. So while design patentability does not require usefulness, there is are still novelty and non-obviousness requirements, i.e. section 101 does not apply, but sections 102 and 103 do apply to design patents.
Also the same marketing benefits that are afforded the applicant who has filed for or obtained a utility patent, are available to one seeking a design patent, namely the use of “patent pending” or “patent issued” markings on products and product literature. For example, just filing a patent application (regardless if it is a design application, provisional application, or non-provisional application) confers the right to market with “patent pending.” For many clients, this superiority in marketing is reason alone to apply for a design patent.
The last benefit of the design patent, is that the term of the design patent is dated from the date of issuance and not from the filing date as with utility patents. But unlike the 20 year term of utility patents, the design patent term is only 14 years. However, unlike utility patents, design patents have no ongoing governmental carrying costs, i.e. with design patents there are no maintenance fees due to the USPTO.
In sum, while design patents certainly offer limited protection compared to the broad protection provided by utility patents there are a number of reasons why it may make sense to apply for a design patent. And to bring that point home, consider these diverse sampling of various ornamental designs that can be protected by a design patent:
- The shape of the Coke-Cola bottle (D48,160);
- many fonts have been protected by a design patent, including D000001 – the first design patent ever;
- computer generated icons which appear on a display (see MPEP 1504.01(a));
- sculptures and monuments, such as the Statue of Liberty (D11,023);
- Apple’s iPad (several of which were instrumental in Apple v. Samsung litigation (678 F.3d 1314 (Fed. Cir. 2012)), e.g. D504,889);
- the look of just about every automobile model ever produced, for example see BMW’s design patent D371,328; or
- designs appearing on fabrics and textiles.
References: See MPEP 1500 and 35 USC 271.
Eric Kelly
USPTO Registration No. 70,302
Patent Agent at
JAFARI LAW GROUP®, INC.