Design Patent Applications: A Detailed Guide
It's not just what's inside that counts, it's also the outside that can make all the difference. In the world of intellectual property, design patents provide a crucial layer of protection for the appearance of your invention. While most people are familiar with utility patents, design patents are also an important tool in the world of patents. In this article, we’ll take a closer look at what design patents are, what kind of protection a it provides, why they matter, and the process of filing one.
Design patents offer a number of benefits for inventors and companies that invest in them. They provide legal protection for the visual appearance of an object, can give a company a competitive advantage, provide licensing opportunities, increase the overall value of a company or product, and offer international protection.
What are design patents?
A design patent is a type of patent that protects the ornamental design of a functional item. Let's break down what a design is, and what an ornamental design is.
In the context of a design patent application, a "design" refers to the visual characteristics embodied in or applied to an article of manufacture or a portion thereof. These visual characteristics are the appearance presented by the article, which creates an impression through the eye upon the mind of the observer.
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. However, it's important to note that a design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation.
“[35 U.S.C.] 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” (In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980))
Furthermore, to be eligible for protection under a design patent, the design must be a definite, preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements. This means that a design cannot be protected if it is merely a result of the way the article functions or if it is a combination of functional elements.
The term "ornamental design" refers to the aesthetic, non-functional elements of an article of manufacture. These can include the shape, pattern, color, and texture of the article. In other words, a design patent protects the way a product looks–it's visual appearance. This can include the shape, pattern, texture, or overall appearance of a product. For example, Apple has design patents on the appearance of the iPhone and iPad. A design patent may protect the unique shape, pattern, or surface ornamentation of a product, but not its utility or technical function (a utility patent). These design patents have allowed Apple to prevent competitors from copying the look and feel of its products, which is critical in the highly competitive technology market.
What kind of protection does a design patent provide?
A design patent provides the holder with exclusive rights to the ornamental design of an article of manufacture for a period of 15 years from the date of grant. They give you the legal right to prevent others from making, using, selling, or importing an article of manufacture that has a substantially similar design to the patented design. In other words, it gives the holder the exclusive right to use the design for commercial purposes.
What are the benefits of design patent applications?
Design patents offer a number of benefits for both inventors and companies that invest in them. They provide legal protection for the visual appearance of an object, can give a company a competitive advantage, provide licensing opportunities, increase the overall value of a company or product, and offer international protection. As such, obtaining a design patent can be a worthwhile investment for those in the business of innovation and design. Let's take a closer look into each of these benefits.
A design patent provides legal protection for the visual appearance of an object, rather than its function. This means that if someone copies your design, you can take legal action to stop them from doing so. This is particularly important for companies that invest heavily in the design of their products, as it ensures that their competitors cannot simply copy their designs and undercut them on price.
Obtaining a design patent can give a company a significant competitive advantage. It allows them to differentiate their products from those of their competitors and build a unique brand identity. Consumers may be more likely to choose a product with a distinctive and appealing design, particularly if it is protected by a design patent.
Design patents can also provide valuable licensing opportunities. If your design is particularly innovative or popular, other companies may be willing to pay for the right to use it in their own products. This can be a significant source of revenue for inventors and companies.
A design patent can increase the overall value of a company or product. Potential investors or buyers may be more likely to see the value in a product that has a unique and protected design. This can be particularly important in industries such as fashion, where design is a key factor in the success of a product.
Design patents can be obtained in multiple countries, providing protection for a design on a global scale. This is particularly important for companies that sell their products internationally, as it ensures that their designs are protected in all markets.
What is the process for filing a design patent application?
To obtain a design patent, an inventor must file a design patent application with the USPTO. The basic requirements for design patent applications include a clear and concise description of the design, including any features that contribute to the overall appearance of the object. Additionally, the design must be new and non-obvious, meaning it can't be too similar to existing designs. The complete filed application must include:
A written description of the design, including any necessary drawings or photographs.
A claim that specifically identifies the features of the design that are being claimed as unique and original.
A declaration that the inventor is the true and original designer of the article of manufacture.
Payment of the appropriate fees.
After the application is filed, it will be examined by a patent examiner to determine whether it meets the requirements for patentability. If the examiner approves the application, the patent will be granted and the inventor will have exclusive rights to the design for a period of 15 years from the granted date.
Why are design patents important?
Design patents are important because they can provide valuable protection for inventors, particularly in industries where design is an important factor in consumer purchasing decisions. For example, a design patent for a unique smartphone design could prevent competitors from copying the design, which could harm the sales and reputation of the original inventor.
An example of a popular and useful application of design patents is in the fashion industry, where designers often rely on design patents to protect their unique designs. For instance, in lululemon athletica canada inc. v. Calvin Klein Inc. et al, 2017 FC 402, lululemon successfully obtained a design patent for its "Astro Pant" yoga pants. The design patent protected the unique appearance of the pants, including features such as the waistband and logo placement. When Calvin Klein introduced a similar pair of pants, lululemon was able to bring a successful infringement lawsuit based on its design patent.
In addition, design patents can also be a source of revenue for inventors, as they can license or sell their patent to others who wish to use the design. They can also be used to deter competitors from entering a particular market–especially if the cost of designing around the patent is too high.
Q: How do design patents differ from other types of patents?
Design patents differ from utility patents, which protect the functional aspects of an invention, such as its structure, composition, or process. Utility patents are typically more complex and difficult to obtain than design patents, and they provide broader protection.
Design patents also differ from trademarks, which protect logos, slogans, and other identifying marks used in commerce. While trademarks are concerned with branding, design patents are concerned with the visual appearance of a product.
Q: Can I license my design patent to others?
Yes, a design patent holder can license their patent to others, allowing them to use the patented design in exchange for royalties or other compensation. Licensing can be a way to generate revenue from your patent without having to manufacture and sell the article of manufacture yourself.
Q: Do patent term differs for utility, design, and plant patents?
A common misconception in the world of patent law is that the patent term is the same for all types of patents. However, design patents have a different term than utility and plant patents, which share the same patent term. For utility and plant patents filed after June 8, 1995, the patent term is up to twenty years from the date of filing of the earliest related patent application. For utility and plant patents applied for on or before June 8, 1995, the patent term is seventeen years from the date of patent grant or twenty years from the date of filing of the earliest related patent application, whichever is longer. Design patents, on the other hand, have a term of fifteen years from the date of grant, if the application was filed on or after May 13, 2015. If the design patent application was filed before May 13, 2015, the term is fourteen years from the date of the grant. It is important to be aware of these differences in patent term to ensure that your patent protection strategy is effective and aligned with your business goals.
Q: What happens when my design patent expires?
Once your design patent expires, anyone can use the patented design without your permission. However, if you have created a brand around the design, such as a logo or product packaging, you may still have trademark protection for those elements.