Top 5 things to know about design patents
What is a design patent?
A design patent is a legal form of protection for the ornamental design of an article of manufacture. The subject matter of a design patent relates to the shape and surface features of an article. In laymen’s terms, the scope of protection offered by a design patent is substantially what is illustrated in its figures.
How are design patents different from utility patents?
Design patents are different from utility patents in a variety of ways. Design patents protect the way an article looks while utility patents protect the way an article functions and operates. The United States Patent and Trademark Office (USPTO) charges less for design patents than utility patents and they are much quicker to procure than utility patents. Currently, the USPTO reports that the average pendency for design patents is about 19 months while average pendency for utility patents is about 24 months as measured from the date of filing. Additionally, design patents are not published before they issue and are not subject to continuing maintenance fees while utility patents are published 18 months after filing and are subject to increasing maintenance fees due at 3.5, 7.5, and 11.5 years after grant. Design patents are valid for 15 years from the date of grant while utility patents are generally valid for 20 years from date of filing. However, design patents typically offer a narrower scope of protection than utility patents.
What can design patents be used for?
Design patents can be granted for a wide-ranging list of articles including: clothing, shoes, packaging, containers, vehicles, fasteners, mechanical components, tires, paper forms, even the ornamental design of graphical user interfaces displayed on a computer screen. This list is certainly not limited, as basically any article of manufacture may be protected by a design patent as long as it meets the threshold criteria of having utility, being novel, and being non-obvious.
Why do I need a design patent?
Design patents are a valuable tool used to prevent counterfeit products and knock-offs from entering the market. It is advisable to consider both design patent protection as well as utility patent protection in a well considered patent strategy.
How can I tell if someone infringed on my design patent?
The test for determining if a design patent has been infringed requires the court to look at the accused infringing product and then look at the design patent and determine whether the infringing product is “substantially the same.” This is called the “Ordinary Observer” test. Below are examples of design patent figures next to allegedly infringing products as they appeared in documents filed with various courts during design patent infringement litigation. Could you determine if these products are “substantially the same” as the design patent?
When developing a new product, you may want to consider whether a design patent can provide intellectual property protection that could bring value to your business.