For many startups, entering the world of intellectual property can seem like a daunting task.
Not only are there important financial considerations, but there are different categories of intellectual property to choose from. In the United States, for example, there are three such categories – patent, trademark, and copyright – each with IP rights subtypes within those categories.
While a comprehensive IP portfolio should include all of the different types of rights, obtaining a patent should be a top priority for any startup. In fact, many investors will insist on patent rights before investing.
In this article, I’ll explain why a design patent can be a good initial choice for startups and inventors working on a tight budget and tight schedule.
Design or utility patents
A patent is an essential investment for anyone looking to commercialize a product. Basically, a patent is a finite exclusion right. After passing the patentability tests, the United States Patent and Trademark Office (USPTO) will grant the applicant a limited monopoly over their invention in return for public disclosure of that invention. This means that during the term of the patent, 20 years from the filing of a utility patent or 15 years from the grant of a design patent, the patentee can prevent others from manufacturing, use, import, sell or offer to sell the patented invention. Once the term has expired, the invention is deemed to have been dedicated to the public so that anyone can use it.
In the United States, we have two types of patents:
A utility patent protects the functional aspects of an invention: what something does, how something works, a chemical formula, etc.
A design patent, on the other hand, protects the overall visual appearance of a design. Design patent applications are limited to ornamental features and cannot include functional elements.
There are two big factors a startup or inventor should consider a design patent for their first venture in the IP world: time and money. In short, the cost of obtaining a design patent is usually a fraction of that required for a utility patent, and design patents will generally be granted much faster than their utility patent counterparts.
The advantage of time
Let’s talk about the timing first. In the United States, utility and design patents are subject to extensive scrutiny. This means that once an applicant files a patent application, before receiving an granted patent, a USPTO examiner examines the application and determines whether it passes the patentability tests: is the invention new, new, not obvious, sufficiently described and activated? This review naturally takes some time and as a result the USPTO has a considerable backlog of pending applications awaiting review. Once an examiner has considered an application, he will issue a first action of the office. This will generally fall into one of two categories, a rejection or an allowance.
The USPTO provides ongoing tracking of how long you wait to receive a decision for both design patents and utility patents. The USPTO tracks both the duration of the first action and the total duration. The first action timeframe is the average number of months between the filing date of the application and the date a first office action is sent by the USPTO. The total waiting time is the average number of months between the filing date of a design and the date the application reached the final decision (for example, granted as a patent or abandoned). The numbers speak for themselves:
An important additional consideration is that many utility patents will at some point require what is called a Continuing Review (RCE). An NCE essentially files the claim after encountering some sort of roadblock during prosecution, usually in the form of a final rejection. When taking into account the additional time taken by NCEs, the total average duration of all utility patents climbs to 28.1 months.
As you can see, on the most conservative metric, design patents see desktop first action around 20% faster than utility patents. And in my experience, it is not uncommon to receive a first design patent action within a year of filing.
Now on to the cost. Adding up attorney fees, USPTO fees, and research fees, the average cost to file a utility patent application can easily be anywhere from $ 12,000 to $ 19,000. For comparison, the cost of filing a design patent application will typically be about one-third of it, varying between $ 2,000 and $ 5,000 depending on the complexity of the design.
Another important factor to consider is post-deposit fees. These include, for example, attorney fees to respond to a lawsuit and issuance or maintenance costs. According to USPTO statistics, design patents have an objectively higher allocation rate than utility patents. U.S. design patents have a allowance rate of over 85 percent. On the other hand, the average allocation rate for utility patents between 2006 and 2018 was 51.3 percent. In addition, research shows that design patents generally have a higher first action indemnity rate – when they are authorized at first instance without rejection – about 59%. First action grants for utility patents are exceptionally rare. In practice, it is much more common for design patents to receive a first action allowance than utility patents.
Putting all this together, not only is the initial cost of a design patent application a fraction of that of a utility patent, but because design patents have a higher allocation rate and more importantly a first allocation rate, post-filing costs are also likely to be considerably lower for a design patent. And if that doesn’t seem like enough to you, design patents, unlike utility patents, have no USPTO maintenance fees due after the patent is granted.
Disadvantages of design patents
While design patents certainly have their advantages in terms of time and money, they do have certain limitations. As mentioned, design patents protect the appearance of something, not the function.
Therefore, design patents will not protect against redesigns that have the same underlying function but look very different. That said, design patents can nonetheless be an effective initial means of protecting intellectual property, including when removing counterfeit products from the online market such as Amazon.
Design patents do the trick
Design is an integral part of almost all consumer products. People want to buy products that look attractive. Design patents give you three different ways to protect the appearance of your product:
The physical form of the product itself
Packaging for the product
Graphical user interface for software
So while a design patent may not protect any underlying function, it can protect you from a competitor who copies the look of your product. The threat of patent litigation will make any potential infringer think twice before copying your product design. Moreover, if a competitor chooses to enter the market, he cannot simply make a simple copy; instead, they will have to spend resources to change the appearance of the competitor’s product, which helps to differentiate your patented product.
Overall, design patents tend to be stronger as part of a portfolio combined with utility patents. But if you want to benefit from initial intellectual property protection and have the ability to place that coveted “patented” mark on your products, as the first step in bringing a product to market, apply for a design patent. can be a great option.
The opinions expressed here are the current opinions of the author and may not reflect the opinions of McAndrews, Held & Malloy, its clients, or any attorney or individual employee. This is for general information purposes and is not intended to be – and should not be construed as – legal advice.