Once upon a time one of the ways you could spot the scams from the legitimate operators in the patent industry was to look at who was directing clients to get design patents. Design patents have always been easy to obtain, indeed far easier to obtain than a utility patent. Of course, as with many things in life and with virtually everything in the realm of intellectual property law, the easier something is to obtain the less rights that are conveyed. You can obtain a copyright for under $50 if you do it yourself and you get tremendously long protection in terms of years – generations really – but the rights are exceptionally weak. This tried and true set of rules has been turned on its head to at least some extent with respect to design patents and not nearly enough inventors are seeking design protection.
A protectable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Distinguish, if you will, an ordinary steak knife from a butcher’s knife. In any knife there will typically be a handle and cutting blade. A design patent would not protect the mechanical structure, but rather will protect the appearance. In this regard it is possible for many different knives to receive design protection even though the basic handle and blade configuration is well known. The question for patentability is whether the presentation or appearance of the functional item is unique.
Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture. In other words, a design patent will protect the way something looks, not the way it functions.
Typically an inventor wants to protect the function of the invention when at all possible. This is because if you obtain a utility patent you will be able to prevent others from making, using, selling or importing into the United States any product that is functionally covered by the claims in the issued patent regardless of whether the device looks anything like what you are making or anything at all like the drawings in your patent application. For this reason utility patents have been and always will be stronger, broader and far more desirable to have. But what if you cannot get a utility patent because the underlying invention is not functionally unique, it just looks different? Then you are in the realm of the design patent. Also, what if you have something that is functionally unique but also has a unique visual presentation? Then you might be able to get both a utility patent to cover the function and a design patent to cover the unique physical characteristics that manifest in visual ornamentation.
If you have read The Truth About Idea & Invention Promotion Companies, you are aware that I caution inventors to beware those who tout design patents. Today most of those that many in the industry would identify as scams are not pushing design patents on inventors because of the historical negative view of design patents. That, however, is not good advice any longer. True, design patents are weak and generally appropriate only as a part of a broader, well considered patent strategy.
Simply said, if you are going to seek and obtain only one design patent then you will likely be extremely unsatisfied with the rights you obtain. However, design patents must be considered by all inventors because of the backlog at the United States Patent and Trademark Office. It can take 3 or more years, sometimes substantially longer, to obtain a patent. By contrast a design patent can in many instances be awarded in as few as 6 to 8 months. Some patent is better than no patent, so inventors with a gadget or device should ordinarily be seeking design patents as well as utility patents for that reason alone.
Design patents can also be an extremely useful tool in your intellectual property arsenal, particularly when you are attempting to create overlapping protection, thereby developing a true intellectual property portfolio. For example, I have seen situations where one inventor possessed dozens of design patents on a particular product. In one case there were over 40 such patents. The very old studies on design patents, which are really too old to be relevant but are often cited nonetheless, suggest that when litigated 7 out of 10 design patents are ultimately found invalid. The question is which 7 out of 10? That would mean this fellow still has 12 viable patents to nail you with if you got too close. So design patents, although weak, can take on significant strength in numbers.
Design patents have also become stronger than ever over the last several years thanks to a September 2008 decision by the United States Court of Appeals for the Federal Circuit (the chief patent law court in the US) in Egyptian Goddess v. Swisa. In this case the Federal Circuit significantly changed the design patent infringement test, choosing to adopt what is known as the “ordinary observer” test. This new test is widely accepted as making design patents more valuable because it will be easier to prove infringement. The infringement test now asks the jury to look at the accused infringing product and then look at the design patent and determine whether the infringing product is a copy or not. Previously the jury was supposed to focus only on the point of novelty, not the totality of the drawings in the design patent. Because design patents infringement requires focus on the drawings in total to assess whether an ordinary observer would believe the accused infringing product to be a copy it is far easier to demonstrate infringement, which makes the design patent right stronger. Of course, design patents are still susceptible to challenge as being invalid, and they still do not protect functionality, so having one is nice but having more than one is even nicer!
As the chart below demonstrates, design patent applications have been on the rise since 1975, but still in fiscal year 2011 there were just over 30,000 design patent applications filed. That strikes me as an extraordinarily low number given the number of inventions that could potentially receive a design patent.
I have started to suggest to clients that they strongly consider obtaining a design patent, particularly when they are already filing a utility patent application on a device. Given the cost of obtaining a design patent, which is very low in comparison to obtaining a utility patent, and this new strength I think design patents should become increasingly popular and extremely advantageous. This is evidenced by the fact that Nike sued Walmart for design patent infringement only weeks after the Egyptian Goddess ruling. A lawsuit that probably would not have been filed otherwise.
Notwithstanding the aforementioned favorable opinion on the power and relevance of design patents, it is essential to understand what you are getting when you obtain a design patent and to understand the limitations of design patents. Design patents do NOT protect an idea or an invention, but rather only protect ornamental design of exactly what is pictured. This means that they are weaker than a utility patent, but because they are VERY easy to get you should consider them to round out your portfolio. Nevertheless, do understand that many patent professionals will refer to a design patent as a picture patent. This is helpful when understanding the limits of the protection. What is protected is exactly what is shown in the drawings, nothing more. Those who know patent law realize I have just over exaggerated a bit, but not by too much. Do not rely only on design patents to protect an invention! Design patents protect the exterior of a product, not its internal workings. To protect the function, structure and interior workings of an invention you should consider either a provisional patent application or a non-provisional patent application.
Although weaker than utility patents, design patents do give you the ability to use the coveted terms “patent pending” and “patent issued,” as is appropriate. I have encountered many individuals who are only interested in a design patent for this very marketing purpose. Additionally, if you already have a patent or patent application covering the function of your invention you might want to consider also protecting the exterior design to provide overlapping protection. There is nothing wrong with either motivation, and if that is why you want a design patent you will certainly get your money worth for the cost.
Some final thoughts on design patents.
- Design patent applications are heavily leveraged on patent drawings. You absolutely cannot skimp on professional patent illustrations, they are EVERYTHING to a design patent application and you should anticipate paying in the range of $600 for high quality design patent drawings.
- The filing fee due to the USPTO for a small entity is $265 plus a 15% surcharge, which currently equates to about $305. If you are successful in obtaining a design patent the small entity will pay $495 for an issue fee, plus a 15% surcharge, which currently equates to about $570. If you do not qualify as a small entity these fees would be doubled.
- The term of the design patent is presently 14 years, and once the design patent has issued there are no other financial obligations necessary to keep the design patent pending for the full 14 year term. This is different than when dealing with utility patents; utility patents have ever increasing maintenance fees due at 3.5, 7.5 and 11.5 years after issuance in order to keep the utility patent alive and out of the public domain.
If you need help with your design patent application please let me know.
Join the Discussion
35 comments so far.
Gene QuinnFebruary 10, 2014 05:45 pm
With a cease and desist letter involved I think we need to take this conversation offline. I will reach out to you directly.
DeniseFebruary 10, 2014 03:12 pm
I thought the issue might be over, but alas, it is not! I am the one creating something that may or may not infringe on another company’s patent design. Basically, I created a piece of jewelry that resembles a top company’s design and I have been selling it (and doing quite well, I must say) on a web store. I received a cease and desist letter a few weeks ago with the company’s 2 design patents attached. Upon close scrutiny of the drawings in their patent designs, I realized that my design does not do what their design drawings do…i.e. their loops go one way and my loops go the other way. The most interesting part of the story, in my opinion, is that although their drawings’ loops go one way, their actual products’ loops DO NOT go that same way! The drawings in both of their patents do not utilize dotted lines for the wire nor the loops.
For that reason, I continued to use my design but I did reply to them stating that I was sorry for any confusion on my part. Over the weekend, I received another cease and desist letter stating that I was still infringing on their IP. I then replied asking for them to send me their utility patent. They replied this morning stating that they do not have one.
I realize that at this point I should just contact an IP attorney and find out for sure before doing anything else. However, this little jewelry business of mine is just that…. very little. I am a teacher and the webstore is a little side project. The cease and desist letter stated that I should feel free to ask them any more questions. I was contemplating asking about the design drawings, but something tells me I should ask a third party, just in case.
Any ideas are appreciated!
James A.February 10, 2014 03:02 pm
The claim (i.e., drawings) of a design patent application need not indicate what material the surface of the ornamental design is comprised of. An applicant can claim a particular material (e.g., wood, glass, metal, plastic, screen/mesh, etc.) and/or a particular color, and there are special drawing conventions for these materials/colors, but these are not a necessary component of design patent drawings. Sometimes there’s a good reason for an applicant to claim surface material and/or color, for example to overcome prior art. I have done it many times in my design practice. That being said, I would venture a guess that far less than 5% of issued U.S. design patents claim any material composition or color.
If you’re worried about potentially infringing an issued U.S. design patent, consult competent legal counsel.
AnnFebruary 10, 2014 11:07 am
If it’s something that is covered in fabric, does the design patent cover if the fabric changes? i.e. I’m doing something specific to a folding chair, and then the “something specific” can vary on color/pattern. But the basic design will be the same.
Gene QuinnJanuary 23, 2014 12:01 pm
A design patent covers what is shown in the drawings. If there is a variation between what is shown in the drawings and what your competitor is doing they very well may not be infringing. That is why those who are interested in creating a strong portfolio that utilizes design patents will obtain multiple design patents on variations. Unfortunately, with design patents it really is difficult if not impossible to give generalized information about what is or what would be infringing without actually considering the patented drawings and the product. Even then you are likely to have a difference of opinion because it all comes down to the ordinary observer and what they believe.
DeniseJanuary 22, 2014 07:14 pm
“A design patent protects only what is shown in the drawings of the patent. There is no requirement that any product match what is covered in a design patent to remain valid.”
Could that mean that other designers could use a design that differs from the drawings in the design patent, i.e. different “loopage”? The art is not prior art, it is the actual patent, from 2008, and the dotted lines in the drawings for some reason do not extend to the loops, only to the wire going through the beads and the dotted line is not included in every angle drawing in the design patent.
Understanding, of course, James’ point of the observer test.
Mark NowotarskiJanuary 21, 2014 04:40 pm
Here’s more on the Samsung – Apple comparison that James referred to. http://bit.ly/strongdesignpatent1
If inside out vs outside in loops are not critical to the aesthetics of the design, you can draw the loops with broken lines in the patent. That way it doesn’t matter which way it is. Both will infringe the patent of the rest of the ear rings look the same or at least “confusingly similar”.
James A.January 21, 2014 04:00 pm
To clarify my point about validity or enforceability, I’m presuming that the commercially-available product is not prior art to the U.S. design patent in question.
James A.January 21, 2014 03:58 pm
The validity or enforceability of a U.S. design patent is in no way dependent on the design of a commercially-available product.
With respect to the scope of a U.S. design patent, it isn’t quite as simple as Gene states. To prove design patent infringement under the ordinary observer test, one must prove that, “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.”
Therefore, the test of infringement is not “is the accused design exactly what is shown in the patent drawings?”, but rather, “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, is the accused design substantially the same as the patented design, such that said purchaser would be deceived such that they would be induced to purchase the accused design, supposing it to be the patented design?
As a case-in-point, take a look at images of the accused Samsung products vis-à-vis the drawings of the asserted Apple patents — the designs of the accused Samsung products are certainly not identical to what is present in the asserted Apple patents, and yet, a holding of infringement.
If you intend to use, make, sell, offer for sale, or import any products into the U.S., and you’re concerned about possibly being sued by a competitor, you’d be best served to seek advice from competent counsel having an expertise in design patent law.
Gene QuinnJanuary 21, 2014 03:43 pm
A design patent protects only what is shown in the drawings of the patent. There is no requirement that any product match what is covered in a design patent to remain valid.
DeniseJanuary 21, 2014 12:10 pm
Great information! So useful and easy to read and understand!
If a registered design patent’s actual designs do not match their product, does that make their patent null and void? For example, let’s say that a jewelry company has a design patent for a product and the “loops” go from inside to outside, but their actual products’ “loops” go from outside to inside, is the patent enforceable?
And if that design patent is enforceable, does the design itself only protect the exact specific aspects of that design? So, the “loops” previously mentioned, which on the design patent go from inside to outside, only protect loops going that exact way? Therefore, designers making “loops” going the other way are not infringing on the design patent?
Very very interesting stuff here!
Thanks for any information!
Gene QuinnJanuary 10, 2014 11:41 am
Yes. I think we do have the makings of a good article here.
I’m also working on a quick article on the history of design patents with some statistics. Filings have jumped dramatically over the last couple generations. Still, only about 35,000 applications were filed in Fiscal 2013. I think a lot of inventors are missing opportunities to get useful, quick protection that could play an important role as part of a business strategy.
Mark NowotarskiJanuary 9, 2014 05:24 pm
I think we have the makings of an article here.
What I’ve come to understand is that if you are going to bring your product to market yourself, such as by raising money on Kickstarter and then going into production, design patents can be very powerful. Successful Kickstarter projects are often counterfeited with look-a-likes and then sold as the original on the major shopping sites like Amazon, eBay and Aliexpress. With a design patent you can go directly after counterfeiters because their knockoffs look just like your original. See this article on Olloclip for an example. http://ipwatchdog.com/2013/09/25/the-power-of-policing-trademarks-and-design-patents/id=45369/
On the other hand, if you want to license your invention to another company and let them bring it to market, a design patent isn’t very helpful. Why? Because the company that licenses your product is going to take your basic concept and redesign it to give it THEIR look and feel. They don’t want your aesthetics, they want your technology. So for them a utility patent is a must.
The tragedy is that many inventors who want to license their inventions are told that they can’t get a utility patent but that they can get a design patent as some sort of consolation prize. They go for the design patent only to find that the companies they approach to license their invention just aren’t interested.
It’s not always easy to get a utility patent, but if your mission is to license your invention, it’s pretty essential.
(and of course, none of this is to be construed as legal advice. Please seek competent counsel for your particular case.)
Gene QuinnJanuary 9, 2014 03:12 pm
Mark is correct. “Weaker” really isn’t the right way to describe them. I sometimes say it that way when discussing with inventors because some will mistakenly believe that a design patent is the same as a utility patent. Designs do not cover functionality, but utility patents do not cover the way something appears. For many inventions you should have both design and utility protection. For some inventions utility protection will be superior. For some inventions design patents are critical and superior to utility patents.
Mark NowotarskiJanuary 9, 2014 01:48 pm
Also, I respectfully disagree with Gene’s characterization that “Design patents are generally rather weak..”. Done properly, they can be quite strong. See http://ipwatchdog.com/2013/07/30/strong-design-patents-the-power-of-the-broken-line/id=44215/
Mark NowotarskiJanuary 9, 2014 01:45 pm
You have to be a bit careful about trying to use a design patent to protect a functional shape. If a shape is dictated by the function, then you can’t protect it with a design patent.
Gene QuinnJanuary 9, 2014 11:13 am
Good question. Design patents are generally rather weak and easy to get, but sometimes they can be the perfect protection, particularly if it is a piece of a protection strategy as you are suggesting.
Just the other day I was advising a client on a design patent matter and if someone were to want to copy what they have done they would realistically need to do the same, or virtually the same thing. In such a circumstance a design patent can be quite strong, particularly if you were to consider obtaining a few design patents that cover similar variations (i.e., think circular vs. elliptical for example).
While I only know what you have said and can’t offer any particular legal advice without all the facts, what I would say is it sounds like you are heading in exactly the right direction. This is exactly the type of scenario where I would be very likely to encourage at a client to file a design patent. Of course, if you can also file utility patent application (i.e., provisional or non-provisional) simultaneously with a design patent that would make a lot of sense.
Best of luck.
MikeJanuary 9, 2014 10:41 am
Hi. I’m considering filing both a design and utility patent but am slightly confused. My product works inside of motorcycle engines. If the design itself is the ONLY SHAPE that could fit into a very small area inside an engine will securing a design patent in that instance be similar to securing a utility patent with the exception of the length of time each affords (14 years for design patent and 20 for utility patent)?
Thank you. Your articles (and subsequent comments) were so helpful in educating me on this topic.
Mark NowotarskiOctober 24, 2013 08:30 pm
Once a patent expires, the claimed invention is in the public domain.
That being said, however, you should still talk to a patent agent or attorney about protecting your recreation of the old design. Given the changes in materials, manufacturing techniques and aesthetic tastes, there may very well be protectable aspects of your new product.
AndrewOctober 24, 2013 05:54 pm
Hi, I am curious if it is possible to copy a design from a product (from the 1930’s) and put a copy back in production (a food service item) – is there any risk of infringement with a VERY old patent beyond 14 years? Thanks so much.
Gene QuinnSeptember 23, 2013 10:31 am
If you have a design patent and someone else makes something that provides the same functionality but it does not look the same there would be NO design patent infringement. Design patents only protect the way something looks.
Yael PerkalSeptember 22, 2013 11:10 am
I have a new invention, which is new in the design concept, means it’s a combination of two elements to one product. I want to ask if the combination itself is protected by a design patent? If someone else will make the same combination with a different design of the elements – Is it infringement?
For example, there always were gloves and bracelets, but one day someone thought about combining them to a new looking product- Does he have the protection of the new combination by a design patent, no mattar what the shape of the bracelet is?
If the design patent can’t protect it, and there is no new functionality for a utility patent, is there any other way to protect the new design concept?- which if you think about it, is even more special and hard to invent then just a new decoration/
Mark NowotarskiAugust 26, 2013 02:06 pm
I would be happy to discuss it with you. Feel free to send a note to my gmail [email protected]
Kim DoyleAugust 25, 2013 08:53 pm
Would you be able to give me a second opinion?
Mark NowotarskiAugust 25, 2013 08:29 pm
Great question. You might want to consider getting a second opinion on the utility patent. If there is something new and not obvious about your idea, then it should be protectable.
The problem with licensing design patents on products that haven’t been commercialized yet is that whoever would license them would likely modify the products’ aesthetic designs to give it their own “look and feel”. Hence a license to a design patent on your “look and feel” will be of little value to them.
Kim DoyleAugust 23, 2013 07:56 pm
i have an attorney helping me with a design patent application, but I need a company to market it for me. The company I was using abstained from helping me because we were not able to obtain a utility patent. They said they only represent inventors with utility patents.
Can you refer me to a company that markets inventions with design patents?
Mark NowotarskiAugust 16, 2013 04:50 pm
Yes, you can do a continuation-in-part off of a utility. There is series on Strong Design patents being published now. This issue is covered. Here are links to the first two articles,”Strong Design Patents I: The power of the broken line” and “Strong Design Patents II: The power of color”.
Cheryl R. FiglinJune 13, 2013 11:08 am
If it is possible to do a continuation Design Patent from a Utility then… is it possible to do a continuation in part Design Patent from a Utility? This way if all the views needed for the Design Drawings were not in the Utility you could avoid the 112 rejections. Would that work?
James A.February 10, 2012 10:03 am
A U.S. design patent application can be filed as a continuation from a pending U.S. utility application. (Note — This procedure is not available in Europe.) Of course, your disclosure for a continuation application is only as good as the disclosure of the parent application, so suitable line drawings or rendered views need to be in the parent filing to make this tactic a reasonable possibility. Or else, in the your design application, you’ll likely get a 112 enablement rejection, which will likely be uncurable. As far as timing, a continuation can be filed while there is copendency of any parent or child application that includes all of the relevant disclosure.
Steve MDecember 25, 2011 10:54 am
Speaking of design patents, Gene; do you (or any other readers) know if it’s true that a utility patent (application) can be “converted into” a design patent (application)? Is it filed as a continuation of the utility app; or as an entirely new app? Can a design patent/app rely on the filing date of a (still active?) utility patent (app) for priority? How late in the utility app timeline can a design app be flied and still receive the priority benefit of the utility filing date?
Have you already covered this here at your site Gene (link please if so)?
Any info on all this at the uspto site (link please if so)?
Seems like I read somewhere that this was possible. Can’t imagine it’s used too often.(?)
Paul ColeDecember 22, 2011 10:03 am
The value of design patents depends strongly on the field of endeavour and the nature of the competition.
For example if you are in the toy industry, design patents are cheap and cheerful and often give all the protection that is needed. The infringements are more in the nature of piracy than peer competitor competition. The same is true for parts for consumer products e.g. cartridges for printers, where a lot goes into the design of the cartridge (more than most consumers would think), and even though the replacement is looked at transiently it still has to live up to the reputation of the original manufacturer.
And very often you need protection quickly. In the EU community designs are obtainable within days. So if you are in a fast moving consumer industry such as toys you have something you can enforce when it is needed. By the time the patent gets round to issuing, the product has been and gone years before the patent examiner has even gotten around to looking at the application.
Steve MDecember 21, 2011 05:10 pm
Thanks Gene for another important article with great advice.
I recently received an allowance for my related-to-a-utility patent, multiple embodiments design; with three more multiple embodiment divisionals thereof to follow.
I would add that–done right and in the correct circumstance(s)–trademark and/or copyright IP benefits may also be concurrently obtainable via design patents. And for no extra charge.
Gene’s right: Get all the protection you can; wherever and however you can.
Disclaimer: As I am not an attorney, this is not legal advice.
Stan E. DeloDecember 21, 2011 01:23 pm
It occurred to me a while back that a design patent might be given some additional tooth by incorporating a trademark into the design, as in for instance having the trademark logo molded into the product. It would make knock-off copies a bit more expensive to produce, and I presume a federal trademark has a fair amount of strength on it’s own. It seems as if the combination of the two IP rights might have a greater enforcement value than just the sum of the two separately. Does this seem like a good idea to anyone? Also, could a strategy like this cause any potential problems?
In addition, the new patent marking rules might give copyists a second thought, unless they took the time to go look up the designated web site to find out whether the patent is a utility or design type of patent. Good article about a subject that I have heard very little about before now Gene- Thanks!
Steve HansenDecember 21, 2011 07:02 am
Great post. I would add a couple of tips:
1. Not only are the drawings important, but it is very important to get them right from the outset. The Examiners will scrutinize them for inconsistencies in the various views, and such inconsistencies can lead to enablement rejections that may be impossible to overcome without making corrections that will be deemed “new matter.” I encountered this frequently with shoe design patents where the non-linear, three-dimensional object shapes made it difficult to harmonize the various views (top plan, bottom plan, elevations, perspective). In some cases, we had to refile the application because we could not harmonize the views without running afoul of the new matter prohibition.
2. If you do file utility and design patent applications, be careful not to make any statements in the utility application which suggest that the ornamental features are functional. Functional features do not get patentable weight in a design patent case, which could jeopardize the validity of the patent.
3. You can request expedited examination of design patents by providing the PTO with a search and paying fee. This is helpful for products with a short life cycle. You do not have to apply the references or make statemetns about them, just identify or provide them.
4. Not only is the design patent term 14 years, it is 14 years from issuance–not filing–and there is no pre-issuance publication.
EGDecember 20, 2011 11:41 pm
Your point 1 (the design drawings are everything) can’t be overstated; design drawing ARE THE CLAIMs, plain and simple. Also, understanding what lines of the drawing need to in bold and which need to be dashed can be the difference between having decent design patent coverage and essentially meaningless coverage. Finally, Perry Saidman is definitely the “guru” on how to protect designs.