Design Patents

Posted Friday, July 25, 2014.

When inventors think about obtaining a patent, generally the inventor is considering a “utility patent.” There is a separate category of patent which may be obtained called a “design patent” however. While a utility patent protects functional aspects of an invention, the design patent covers visual ornamental characteristics embodied in, or applied to, an article of manufacture. Put more simply by the USPTO in their “Guide To Filing A Design Patent Application”, a utility patent protects the way an article is used and works, while a design patent protects the way an article looks.

In contrast to a utility patent, design patents have a term that is 14 years from the date of issuance. Design patents are infringed when, in the eyes of an ordinary observer, the accused article resembles the patent article such that the observer would be deceived into believing that the two are the same.

With that understanding, one can see that a utility patent offers better protection than a design patent. After all, to circumvent a design patent, one must merely alter the visual appearance of the article. Circumventing a utility patent may be a much more difficult exercise, depending on the coverage of the utility patent claims.

Design patents offer some advantages over utility patents, however. Since the patent covers strictly the visual appearance, an application for a design patent is substantially less detailed than that of a utility application. That means the design application will require less time to prepare and therefore be less expensive. Patent office filing fees are also less for a design application. One expense which may be higher for a design patent is in the cost of the patent drawings, which are extremely important to the success of a design application since there is nothing else that is examined.

An additional advantage is that examination of a design application is generally quicker than for a utility application. It is even possible to request an expedited examination of a design patent. It costs a little more, but a design patent may issue in as few as four months from the filing of the application when expedited.

When the invention involves a tangible object, I often counsel clients to have both a utility application and a design application filed on their behalf. A design application does not add that much more to the expense of the utility application, and in certain circumstances is much more likely to actually mature into a patent than the corresponding utility application (and more quickly, too).

In that light, a design application can almost be an insurance policy. Upon issuance of the design patent, even while still waiting for a utility patent application to be examined, an inventor can immediately say that they have a patented article. Other than marking the item with the patent number (which begins with “D” for a design patent), there is no requirement to expressly point out in marketing or other communications that the item is covered with a design patent instead of a utility patent.

For example, a well-known inventor and entrepreneur is Lori Greiner, who is an occasional “shark” on the ABC TV show “Shark Tank.” Lori’s Wikipedia page says that she holds over 120 US and international patents. A search of the USPTO’s patent database shows, however, that of the 88 US patents issued in her name, 75 of them are design patents.

Obtaining a utility patent with well-written patent claims is a superior means of protecting intellectual property. However, design patents should not be overlooked. In certain circumstances, one or more design patent applications can play an important role in an overall patent strategy for an invention.

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