How to File a Design Patent

How to File a Design Patent

by Joe Runge, Esq., August 2015

Design patents protect ornamental designs but recent years have brought new focus on the value and use of design patents. Apple successfully asserted a portfolio of design patents that claimed elements of how users interface with apple products. As technology changes, the role of product design is blurring function making novel designs more and more valuable.

Step 1: Determine If Your Patent Is a Design Patent

The USPTO defines design in a few different ways. Foremost, a design consists of the visual characteristics of an article. The visual characteristics must be intentional and reproducible and inseparable from the object itself.

A design patent protects the way an invention looks. Apple’s iPhone is a good example: the way it works is the subject of many utility patents and the way it looks and displays information is the subject of many design patents.

Step 2: Search for Prior Art

Searching for design patent prior art is difficult. Prior art refers to all of the patents, and other work, in the field in which you are applying for a patent. Your invention can't replicate something that has already been added to the prior art. Prior art for utility applications lends itself to keyword searching and you can quickly rule references out. Prior art for design patents requires looking at lots and lots of images. Find as many images in the field of your design and look closely for the combination of design elements that you want to protect.

Step 3: Take a Photo or Make a Drawing

Like a utility application, a design application has formal filing requirements. Start with one or more drawings or photos of your design. Include as many perspectives or examples to describe the totality of the design. Make your drawing or frame your photo to illustrate what makes your design different than the prior art. You will next need to describe the novel design elements in your specification.

Step 4: Draft the Description and Make a Claim

Write the patent claim and include a detailed description of your design. When you pick out the elements to emphasize, remember your prior art search. For example, if you seek to get a design patent for a square shaped juice glass then you will need to point out what makes your design different from other designs already available to the public. Perhaps there is a ratio of the square mouth of the glass to the rectangular sides of the glass. Perhaps there is a color to the glass that differentiates it. Emphasize what makes your design novel.

Design specifications are usually much shorter than utility applications. They enumerate the novel design features and then discuss how their applications affect the article (or product).

Step 5: Complete the Application

When compared to utility applications, filing a design application is not as much work. The USPTO’s EFS system makes it even easier. Regardless, a design application is like a utility application in that it is your final filing, you can make mistakes that you cannot correct and that you must swear an oath upon filing. Take the application very seriously. If you make mistakes then you may limit your patent rights or wind up in legal trouble.

Following these steps will help you get started with writing your design patent application, after you submit the application you'll have to wait for the United States Patent and Trademark Office (USPTO) to review your application.

LegalZoom can help you get a design patent. We offer a flat fee to get started, a review by a USPTO-registered patent agent, and illustrations by a professional artist.