Design Patents: A Low Cost Option for Expedited Patent Protection

by Knobbe Martens Olson & Bear LLP
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This article outlines some of the basics of design patents, as well as some of the advantages and disadvantages, to assist you in developing your intellectual property strategy.

Design Patent Protection

A design patent protects the ornamental design of an article or product.  This can include the product’s configuration, shape, and/or surface ornamentation, among other features.  Design patents are limited to the appearance of the product and do not cover structural or utilitarian features.  

Similar to utility patent applications, design patent applications undergo examination before the U.S. Patent and Trademark Office (USPTO).  To allow the application to issue as a design patent, the examiner must find that the design is new and non-obvious when compared to similar prior existing designs.  Issued design patents are valid for 14 years.  

The USPTO charges certain fees during the life of a design application, such as at filing and at issuance.  No additional fees are required after issuance.    

Many different products can be patented as design patents.  Examples of products in recently issued design patents include: sunglasses, bicycle frames, shoes, bags, toothbrushes, product packaging, medical devices, and screen shots from electronic displays.  Some of the largest holders of design patents include: Sony, Samsung, Nike, Goodyear, Motorola, P&G, Cannon, Black & Decker, Honda, and Kohler.

Foreign Filing and Foreign Priority

Most foreign countries have registration systems rather than examination systems for design patents, which they may call an industrial design or a community design.  This means once the paperwork and drawings are in order the design will be registered.  In many countries, examination, or the comparison of the design registration with prior existing designs to determine if the design registration is really new and truly worthy of design protection, only occurs when and if the design patent is asserted in court.

Foreign filing is generally done on a country by country basis.  There are no international type applications for design patents.  The timing for foreign filing is within six months of the US filing date.  Similarly, to claim priority to a foreign case, the US case must be filed within six months of the foreign filing.

Expedited Examination

Design patents can be a quicker way to patent protection.  Over half of design applications filed issue within one year.  This is in contrast to the three or more years of waiting for a first action in utility cases.  Expedited examination of design applications is also available.  In addition to the normal filing requirements, an expedited examination application requires at filing: 1) a petition requesting expedited examination, 2) a fee of $900 (subject to change), and 3) the results of a patent search.  In 2009, of the 215 design applications filed with a petition for expedited examination, 187 were allowed in 2.2 months and 148 issued in 5.4 months.  In 2012, the average time until issuance for these types of applications was 5.9 months.

Advantages and Disadvantages of Design Patents

Design patents provide many benefits as compared to utility patents.  Design patents are generally less expensive and have no maintenance fees if the design issues as a patent.  The allowance rate is higher for design applications and design patents can generally be obtained much quicker than utility patents.   For example, the average time from filing until issuance in 2012 was 14.4 months.  Expedited examination can result in issuance in as fast as 3-4 months.

Design patents provide the same marketing benefit as utility applications.  Once a design application is on file, the product can be labeled as “patent pending,” and as “patented” once the design patent is issued. 

Design patents are generally considered to be very good for preventing or stopping wholesale copying.  They can also be used to prevent importation of infringing products.  Conversely, design patents are generally considered to offer limited protection as compared to utility patents.  Because of the differences in coverage, design patents can provide some “patent” coverage for products that might not be able to get a utility patent or additional “patent” coverage for products that are or can be covered by a utility patent.  This different basis for patentability can lead to stronger patent protection and more enforcement options.  

What to Provide Your Patent Attorney  

The coverage of a design patent is defined by the figures in the application.  Therefore it becomes important that drawings (preferably CAD drawings) of the product or a sample of the product itself be given to the patent attorney.  From these drawings, or sample, the appropriate figures can be prepared in accordance with Patent Office guidelines.  Preparing the drawings is generally the biggest single expense in preparing a design patent application.  If drawings in an electronic format already exist, providing these to the patent attorney can greatly reduce the cost of preparing the application.

It is also important that you convey to your patent attorney the key features of the design and the features that you believe are most likely to be copied and/or changed by your competitors.  From this, your patent attorney can help you develop a strategy of design patent protection.  This may include modifying the drawings to include multiple embodiments or variations in what is claimed or unclaimed in the design.  This may also include recommendation on variations in the size, shape, or proportions of the design.  The figures can be modified, such as by putting certain non-essential features in dashed or hidden lines.  

Conclusion

Design considerations are playing an ever increasing role in today’s economy as a way to stand apart from the competition.  Design patents can play an important role in protecting these innovations and helping keep competitors at bay, whether they are the only available protection or part of a larger strategy for patent protection.  We look forward to further discussing the potential of obtaining design patent protection in your business and industry going forward.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Knobbe Martens Olson & Bear LLP | Attorney Advertising

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