Design Patents: The Basics

Anyone who invents or discovers any new and useful process, machine, article of manufacture, composition of matters, or any new useful improvement of those things can get a patent. There are three types of patents: plant patents, utility patents, and design patents.

Design patents are for things that can be seen on an item but provide no function or utility to the item. When you think of design patents, you may think of revolutionary concepts such as the appearance of the iPhone, the Tiffany Setting Engagement Ring, or the shape of Hershey's Kisses.

Design patent protection is valuable for small business owners or entrepreneurs looking to safeguard their innovative product designs. Follow along as FindLaw takes you through design patents, what they are, and how to apply with the United States Patent and Trademark Office.

What Is a Design Patent?

United States patent law grants design patents to any person who has invented any new and nonobvious ornamental design for an article of manufacture. The design patent grants exclusive rights to only the appearance of an article but not its structural or functional features. If granted, a design patent lasts 15 years.

If you want protection for a product's functionality, like a smartphone connecting to a laptop to make a call, then you must file a utility patent application. The proceedings relating to the granting of design patents are the same as those relating to other patents. There are a few differences you should keep in mind.

Definition of a Design

In a nutshell, a design is what you can see on a physical item. When you are reading the USPTO design patent application, it defines design as "the visual ornamental characteristics embodied in, or applied to, an article of manufacture." Don't get lost in the technical jargon. If you can see it, and it does not provide a function, then it is likely a design. If it does provide a function, then you cannot file a design patent. You must file a utility patent instead.

Since a design is an appearance, the subject matter of a design patent application may relate to the item or product, called an article:

• Configuration or shape
• Surface ornamentation applied to an article
• Combination of configuration and surface ornamentation

A design for surface ornamentation is inseparable from the article it is on. It cannot exist alone. The USPTO design patent guide defines it as "a definite pattern of surface ornamentation applied to an article of manufacture."

Checklist for Design Patents

Is the design invention:

• Novel? Is it different from all previous inventions in some significant way?
• Nonobvious? Is it a surprising and significant development for somebody who understands the technical field of the invention?
• Nonfunctional? If not, then you should reconsider a design patent. You need to file a utility patent.

If the answer to the questions above is yes, you might be ready for a design patent.

Design Patent Application Process

You can review our extensive elements of a design patent application for more details, but the following will give you enough information to determine if you should file a design patent application.

Application Filing

The design patent application will include the following:

• Name of the applicant, which can be an individual or business
• Title of the design
• Brief description of the nature and intended use of the article
• Patent drawings or photographs
• Figure description
• Cross-reference to related applications
• Executed oath or declaration

Design Patent Drawings

The drawing of the design patent conforms to the same rules as other drawings:

• No reference characters allowed
• Drawing(s) should depict the appearance since the drawing defines the scope of patent protection

Each application can only submit one claim. It must follow a set form that refers to the drawing(s).

Patent Examiner Reviews Design Patent Application

After filing the patent application, the examination of the design occurs. A patent examiner reviews the patent application. They will:

• Check for compliance with formalities and guidelines
• Ensure the submitted drawings are complete
• Conduct a thorough comparison of your design with prior art

At this point, the USPTO either grants or denies the design patent.

Design Patent Notice of Allowance

If you are entitled to a design patent, then you will receive a notice of allowance. This goes to the applicant or the applicant's attorney or agent. At that time, you must pay a design issue fee which ranges from $148 to $740, depending on your business size.

Design Patent Fees

The fees for design patent applications are dependent on the size of your business. The following prices are a range:

• Basic filing fee - $44 to $220
• Examination fee - $128 to $640
• Patent search fee - $32 to $160
• Provisional patent application filing fee - $60 to $300

If you are a small business or startup, the fees are reduced for companies that identify as micro or small entities. A small entity receives about a 60% discount on most patent-related fees, while micro entities receive about an 80% discount on patent-related fees. It is essential to check the USPTO website for the most updated fee schedule and requirements.

Maintenance Fees

Maintenance fees for utility and plant patents are due at 3.5 years, 7.5 years, and 11.5 years after the patent issuance. Design patent holders do not need to pay maintenance fees.

Common Mistakes With Design Patents

There are many common mistakes that small business owners can make when trying to obtain a design patent. Here are some of the most common mistakes to avoid:

• Not completing a prior art search: It is essential to ensure your design is novel and non-obvious. There cannot be a patent for a similar design.
• Inadequate figure descriptions: It is important to provide clear and concise descriptions to go with the drawings you submit. The drawings should aid the patent examiner's understanding of what you want to protect.
• Late filing date: Postponing your application process can result in the loss of patent protection.
• Choosing the wrong classification: Selecting the incorrect classification may result in an incomplete or inaccurate representation of your design.

The Difference Between Design and Utility Patents

In general terms, a design patent protects how an article looks. A utility patent protects the use of an article and how it works.

If the invention requires it, you can get both a design and a utility patent. Utility and design patents afford legally separate protection, but the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

Design Patent Infringement

When you hold a design patent, you can sue others who steal your design without compensating you. This is patent infringement.

Getting Legal Advice About Your Design Patent

Patents are a very complicated area of law. It's wise to have a skilled patent attorney who focuses on patents and is familiar with the U.S. Patent and Trademark Office procedures to assist you.

Whether you are in the filing stage or hoping to appeal a decision, an attorney can help you understand complicated terminology, file applications, and interpret the law. To learn more about intellectual property protection, visit the Intellectual Property section.