Design Patents 101 – Protect Appearance Not Function – IPWatchdog.com

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Design patents are, in my opinion, a sadly overlooked patent. Although a single design patent is a weak form of protection, they can be obtained quickly, inexpensively, and you can market the product using the terms “patented design” once a design patent has been issued. got. Therefore, inventors and their representatives would do well to consider whether one or more design patents would be useful in complementing the protection sought by a utility patent in order to facilitate a broader business strategy.

Design patents and design patent applications

In a design patent application, the object claimed is the design incorporated or applied to a manufactured article. A design patent does not cover the article itself, its operation, or any internal mechanical structure. A design patent simply protects the appearance of the tangible item.

From Design Patent No. 733,373, titled “Pressure Washer,” issued June 30, 2015.

A good example is the pressure washer shown at right. This design patent will cover the appearance of the device, not the function of a pressure washer. So if someone made a different looking pressure washer, they wouldn’t be contravening.

In general terms, a “utility patent” protects the way an article is used and functions, while a “design patent” protects the appearance of an article. Therefore, design patents consist of drawings that show the invention and very little text. The required drawings include the following views: top, bottom, front, back, left and right. Each of these six views is required unless one or more repeats. A perspective view (shown at left) can also be included and is often useful.

For the pressure washer shown at right, note the broken lines. The claimed invention is shown in solid lines. The two most common uses of broken lines are to disclose the environment related to the claimed design and to define the boundaries of the claim. A structure which is not part of the claimed design, but which is considered necessary, may be shown in the drawing by broken lines. This includes any part of an article in which the design is not considered to be part of the design claimed.

From Design Patent No. D730,634, titled "Spiral heel shoe," published June 2, 2015.

From Design Patent No. D730,634, titled “Spiral Heel Shoe,” issued June 2, 2015.

Since a protectable design manifests itself in a particular appearance, the subject of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an item or to the combination of pattern and surface ornamentation.

Design and utility patents can be obtained on an article if an invention resides in both its utility and its ornamental appearance. For example, consider a sneaker. If you were to create a unique exterior appearance for the sneaker, you could apply for and get a design patent. If the sneaker itself worked mechanically differently, perhaps significantly reducing the impact felt by the wearer due to a unique material used in the sole, the sneaker could also be protected by a utility patent because the The invention would also include a functional component. A design patent alone would not protect any functional aspect of the sneaker.

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While utility and design patents provide distinct legal protection, the utility and ornamentation of an article may not be easily separable. The articles can have both functional and ornamental characteristics. For this reason, inventors and their representatives should always consider whether it is appropriate to simultaneously apply for a utility patent (to protect the function and internal mechanical structure) and a design patent (to protect the visual presentation of the product). ‘article).

Design patents and utility patents

Design Patent # D500,000, issued December 21, 2004.

Design Patent # D500,000, issued December 21, 2004.

Generally speaking, design patents are much easier to obtain than utility patent applications. In addition, design patents can usually be granted within 12 months of filing an application. The cost of the application and examination process is a little less than the associated cost of filing and searching for a utility patent application. Yet design patents are generally viewed as a weak form of protection because they specifically only protect the appearance of something. Any variation in appearance could make it impossible to use a design patent to stop what might otherwise appear to be a copy or an infringement. But given the ease with which they can be obtained and the relatively low cost, having design patents to complement a patent portfolio can be a very wise choice, especially if multiple design patents are obtained.

Some of the most common differences between design and utility patents are as follows:

  1. Generally speaking, the term of a utility patent on an application filed on or after June 8, 1995 is 20 years from the date of filing in the United States, while the term of a design patent is 15 years from the date of issue.
  2. Maintenance fees are required for utility patents, but no maintenance fees are required for design patents.
  3. Design patent applications include only one claim, while utility patent applications can have multiple claims.
  4. The restriction between several separate inventions is discretionary on the part of the examiner in utility patent applications, while it is mandatory in design patent applications. This means that if you have multiple designs you will almost certainly need multiple design apps unless the variation is small enough.
  5. Foreign priority can be claimed for the filing of utility patent applications up to 1 year after the first filing in any country signatory to the Paris Convention, while this period is only 6 months for applications for design patent.
  6. Utility patent applications can claim the benefit of a provisional application for up to 12 months, but design patent applications cannot claim the priority of a provisional patent application.
  7. A Continuous Review Request (RCE) can only be filed in utility and factory applications, while RCE is not available for design applications. However, a continuous pursuit request (CPA) is available for design requests (not for utility applications). Functionally, an RCE and a CPA are quite similar from an applicant’s perspective.
  8. Utility patent applications filed on or after November 29, 2000 are subject to publication, but design applications are not published.

For more basic information on design patents, please see:

Gene Quinn

Gene Quinn is a patent attorney and publisher and president and CEO of IPWatchdog, Inc. Gene founded IPWatchdog.com in 1999. Gene is also a keynote speaker in the PLI Patent Bar Review course and an advisor to the law firm Berenato & White, LLC. Gene’s specialty is in strategic patent advice, drafting patent applications and patent prosecution. He consults with lawyers facing specific procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation, and works with start-ups in the United States and in the world, mainly in software and IT innovations. . Gene is admitted to practice law in New Hampshire, is a professional patent attorney, and is also admitted to practice in the United States Court of Appeals for the Federal Circuit. CLICK HERE to send a message to Gene.


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