The "Bargain Patent": Requirements for Design Patents

Winthrop & Weinstine, P.A.
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[authors: Jeffrey R. Stone and Martha J. Engel]

There are many advantages to adding design patents to your overall intellectual property strategy, as we saw exemplified in this summer's verdict in Apple, Inc. v. Samsung Electronics Co. Ltd., et al. and both companies' use of design patents in enforcement. Among the advantages of design patents, they are considerably less expensive to file, prosecute, and maintain than their utility patent counterparts, while enabling owners to employ the same enforcement strategies to protect their competitive advantage in the marketplace. In addition to the lower filing fee, the inventions are described and claimed through drawings, rather than lengthy, technical descriptions. Design patent applications are also more likely to be granted, with few rejections from the Patent Office. Used alone or even in conjunction with utility patents, design patents can help maximize your protection.  

Basic Requirements for a Design Patent Application
 

Title: The title should identify the article that embodies the design or to which it is applied (e.g., electronic device, shoe, chair). A descriptive title enables the examiner to make a proper search and examination of the design, relative to designs of similar articles.   
Drawings: The most important requirement, the drawings form the basis for the scope of protection. The drawings must be sufficient in number to constitute a complete disclosure of the appearance of the design. This may require a number of views, including perspective views, front, side, top and other views. The drawings should ordinarily be line drawings, but photographs are acceptable in some circumstances. Because the drawings constitute the scope of protection of the resulting patents, all solid lines denote claimed portions of the design. Broken lines are for illustrative purposes only and not considered part of the claimed design. Shading also may be used to illustrate contours or color contrasts that the applicant wishes to claim.  
Description of the drawings: Each drawing must be briefly described individually in order to indicate the view shown. The description helps provide context for the drawings and clarify the scope of the claimed invention. For example:
FIG. 1 is a top perspective view of the device in accordance with the present design; 
FIG. 2 is a top view thereof;
FIG. 3 shows a bottom view thereof, the broken lines being shown for illustrative purposes only and form no part of the claimed design; and
FIG. 4 shows a left view thereof in accordance with the present design and the right side is a mirror image of the left side.  
One claim: As opposed to utility patents, which often have more than 15 claims, design patent applications are limited to a single claim. Contrary to the often arcane, but precisely crafted, claims of utility patents, the single claim of a design patent is highly formulaic. The format of the single claim is: "I/we claim the ornamental design for [the article identified in the title], substantially as shown and described."  
Executed oath of declaration by the inventors: The inventors must sign a statement that they believe they are the original inventors of the subject matter, that they have reviewed and understand the contents of the application, and that they acknowledge the duty to disclose all information material to patentability that is known to them. A simple form oath or declaration is usually provided to the inventors for their signatures.  
Fee: The filing fee for a design application is currently $530 for a large entity (a company with more than 500 employees) or $265 for a small entity (all other applicants). Comparatively, the filing fee for a utility application is currently $1260 for a large entity and $630 for a small entity.  
Once the application is filed with the United States Patent & Trademark Office, the prior art is searched and the application is examined for patentability by the Examiner in view of the prior art. In order to be patentable, the design must be new and not obvious in view of the prior art.  

After the Examiner determines that the design is patentable, a Notice of Allowance is issued. Statistics show that about 80% of design patent applications are allowed, compared with only about 40% of utility patent applications. In addition, the average time between filing and issuance is about 15 months for a design patent, compared to almost 34 months for a utility patent application. After the application is allowed, additional issuance fees are required to be paid before the patent is granted.   These fees are currently $1010 for large entities and $505 for small entities (compared with $2070 and $1185 for a utility patent).  

A design patent expires 14 years after the date the patent issues; a utility patent expires 20 years from the date the application is filed. Given the pendency of utility applications within the Patent Office, the duration of protection resulting from the two patents may be comparable. And unlike utility patents, where maintenance fees are required in the 4th, 8th and 12th years after issuance, no maintenance fee is required during the life of the issued design patent.

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.

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