Understanding Your Design Patent

Understanding Your Design Patent

by Michelle Kaminsky, Esq., August 2019

If you've ever seen something advertised as having a "patented design," you are already somewhat familiar with the idea of a design patent. When most people think of patents, they imagine a utility patent, which protects the way inventions are used, but a design patent is another type of protection that covers only the appearance—that is, the original shape or surface ornamentation—of an object.

Similar to a utility patent, a design patent gives its owner the exclusive legal right to make, use, sell, or import the protected article of manufacture for a period of time. Unlike a utility patent, however, a design patent doesn't address how an object is used or how it works. In short, a design patent protects the form of an object, not the function.

Read on to learn more about how a design patent can benefit you.

Design Patent Basics

A design patent protects the design features of an object, such as a shoe, purse, or piece of furniture. As stated in the Design Patent Application Guide provided online by the United States Patent and Trademark Office (USPTO), a "design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture."

More specifically, the USPTO requires a patented design to be:

  • New
  • Original
  • Ornamental
  • For an article of manufacture

To qualify for a design patent, the design must meet two primary requirements:

  1. The design must be industrial, which means works of art such as paintings or sculptures are not eligible for design patents. The object must have a use separate from the design itself to be protectable by a design patent.
  2. The design must be separable from the function of the object. If the design is so intricately linked with how the object works, a utility patent is more likely the type of protection it needs.

If you feel that your design meets both of these requirements, you can move on to the application process for a design patent.

The USPTO's Design Patent Application Guide provides a thorough description of how to file a design patent, but generally you must develop drawings that effectively communicate the visual or ornamental features of the design. The USPTO does have special rules to follow regarding design patent drawings, so be sure to pay attention to these rules, especially as related to the use of letters, numbers, and reference characters.

A design patent application is straightforward, as it follows a set form and allows for just one claim, which is where the application defines the scope of the protection the design will receive with a patent, if granted.

If the USPTO decides that your design passes its examination process, you will receive a notice of allowance asking for you to pay an issue fee. Once you pay the fee, congratulations! You are the proud owner of a design patent.

As of May 13, 2015, a design patent lasts for 15 years, and there are no maintenance fees required. Design patent owners can enforce their rights by suing alleged infringers in federal court.

Design Patent vs. Utility Patent

An inventor can generally obtain a design patent more quickly and less expensively than a utility patent, but, as noted above, the main difference between a utility patent and a design patent is what they cover. Accordingly, this determination is how you should decide on which to request.

Something else to consider is that you may be able to obtain both a utility patent and a design patent on the same article if the inventive nature of the object concerns both its form and function; however, the design and utility of the object still must be able to be separated.

Different types of intellectual property qualify for different types of protection. If your design qualifies as a work of art, you may be able to seek a copyright to protect others from using it without your permission. Or, if the design functions as a trademark for your business or product, you may also wish to seek trademark protection.

Final Thoughts on Design Patents

Once you've secured your design patent, you can market your object using a "patented design" label. Your work still isn't done, however. Even with the design patent in hand, you should still remain vigilant to protect your design and make sure no one is encroaching on your patented territory. If you find imitators, remember that—with a properly obtained design patent—you can seek remedies in federal court.

Overall, dealing with design patents can be complicated, and knowing how to maneuver through the application process can make a big difference to the protection your intellectual property eventually receives. To be sure you're keeping your inventions as safe and profitable as possible, you should consider consulting a legal professional who specializes in this area of law.