Common questions arise once an investor understands that a design patent is necessary for their new and exciting product. Questions regularly thought about are “where do I begin?” and “what information is needed?” These, and many more, are answered below. At the end of this article, you will confidently call an attorney at Lloyd & Mousilli who can handle your design patent application.
A Design Patent
Do you need a design or utility patent?
You need a design patent whenever an invention has new and unique ornamental features embodied in a product. In simple terms, a design patent protects the way an article looks. Whereas, The way an article is used and works are protected by a utility patent. Theoretically, you have created a new and useful phone. A utility patent protects the phone’s ability to call and text. A design patent protects the shape of the phone. If your invention simply created a new and unique way to call or text but shaped like any other phone, you cannot obtain a design patent.
A patent is a license giving a right or title for a set period of time – 20 years for a utility patent and 15 for a design patent – to an inventor. The inventor’s rights exclude others from making, using, or selling their invention. In particular, a design patent protects the inventor’s design from other companies creating a substantially similar design.
What makes a design patentable?
First, you as the inventor should understand how the USPTO defines the word “design.” The definition says, “A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture.” (35 U.S.C. 171) In other words, a design is the visual characteristics of a new physical product. Think of a visual characteristic as the unique shape, look, or physical form of the product.
Second, the design must be primarily ornamental. If the utility of the product primarily dictates the product design, then it cannot obtain a design patent. Therefore, a design patent is not available if the utility is primarily achieved through the product’s characteristics. More so, the design should be visible during a commercially important time or in normal use. Using our phone reference as an example, if the design of the phone is necessary for the new and unique way of calling, then the design is not primarily ornamental. Likewise, if the design in question is the hard drive inside the phone, and there is no commercial importance, the phone may not secure a design patent from the USPTO.
The design may also be uniquely fixed to a tangible medium, but not necessarily independently connected to it. For example, a unique design on a dresser may obtain a design patent that can be applied to lunch or toolbox.
Third, is to understand what is considered an “article of manufacture.” The law broadly describes it as any physical product made from raw materials. However, there are some exclusions which include paintings, silkscreens, and decals. If there you are uncertain about your article of manufacturer’s eligibility, talk to an experienced attorney at Lloyd & Mousilli.
In conclusion, if your new physical product has visual characteristics that are primarily ornamental, then a design patent is for you. Some common examples of design patents are fountains, lamps, cars, and dressers.
Understanding a Design Patent Application and its Process
The United States Patent and Trademark Office is the governing agency that administers patents to founders. Having an understanding of the materials required for a design patent will enable you, as an inventor, to better situate yourself with an attorney who will complete the patent process. Here, you will learn what information you should provide an attorney at Lloyd & Mousilli to get your design patent process started.
Here is what the USPTO requires for a design patent application.
Create a Preamble
A Preamble is a text that contains the name of the applicant, title for the design, and a short description on the intended use of the product that the design is embedded in. The Preamble is what appears on the patent when the design is granted patentability.
Cross-references to related applications.
For example, any related utility or design patent applications on the phone. You may or may not have this information readily available. Keeping a detailed database of the patents your company has applied for and owns is essential in making this element efficient.
A statement regarding whether or not the design is federally sponsored.
A detailed description of the figure(s) of the drawing (“The Title”).
The title of the design must identify the article in which the design is embodied by the name generally known by the public. The Title should be specific and descriptive of the product. A good title for the phone reference would be “…a new design for a phone. The phone provides calling and texting.”
A feature description.
A feature description indicates each view of element seven, the drawings. For example; top, bottom, perspective view, etc. Another description of the design is not necessary because the examiner finds element seven, the drawings, as the best description.
A single claim.
The application only includes one claim and defines the design. As a result, the claim MUST be in formal terms. The claim must say, “The ornamental design for (the article/product which embodies the design) as shown.” For example, “The ornamental design for the phone as shown”.
Drawings or photographs.
The drawings or photographs artistically exemplify the design which embodies the invented products. It must either be in the form of a drawing or a black and white photograph. Typically, the USPTO requires drawings with black ink on paper. However, if photographs are the only practical medium to display the design then they are permitted. Drawings and photographs may not be sent in conjunction with each other and a photograph submission must not show an environmental structure. An environmental structure would be the table a lamp sits on or flowers in a vase. On rare occasions, the USPTO will accept color drawings and photographs after a petition is granted.
Detailed drawings and photographs are of utmost importance because they MUST show the entire visual disclosure (“Views”) of element six, the claim. A sufficient number of drawings varies. At a minimum, the drawings and photographs must show the front, rear, right and left sides, top, and bottom. There must be an appropriate number of drawings or photographs to completely disclose the contours of the surface(s). Adding perspective views shows the examiner the contours and shape of three-dimensional designs.
If one view simply duplicates another view, and the specification makes this very clear it may be omitted from the drawings and photographs. For example, mention in the specification if the right and left sides are completely uniform, and do not create two independent views. (Figure 1) & (Figure 2)
Changes to the drawings or photographs after submission is not permitted. Getting a professional draftsperson who specialized in design patent drawings will prevent an incomplete picture of the claimed design.
Executed oath or declaration.
An oath or declaration is required and must contain a number of elements. Click HERE to see what is required.
The process has potentially four elements. They are the filing of the application, the examination, the response, and potential reconsideration.
Grinding the Application:
There is not a particular format required by the USPTO. However, consult an attorney for a successful template. Once the application has all the required documents, has been submitted, paid the appropriate filing fees, and is received by the USPTO, an Application Number and a Filing Date are assigned. This information is sent in a “Filing Receipt.”
A filing, search and examination fee is required. Good news startups; your fees are reduced by half.
Here, an examiner reviews the application. His or her primary objective is to check compliance with formalities, ensuring completeness of the drawing, and comparing the design with the prior art. Prior art is patented designs and published materials that are substantially similar to the application in question. If the examiner finds the design patentable, then instructions are sent to complete the process. CONGRATULATIONS YOU ARE ALMOST DONE. However, not all applications get approved at the first examination proceeding.
An examiner may deny registration for a few reasons. If the application is initially denied, a notice is sent to the applicant called an “Office Action.” The applicant may receive an Office Action if the disclosure cannot be understood or is incomplete or if there is a patented design substantially similar to the applicants (“prior art”). This office action will detail the issues and reasons behind denial and may suggest amendments.
A response is only required after receiving an Office Action and should contain any necessary amendments, a request for reconsideration, and be in writing. A timely response – within six months of the date the Office Action was mailed – is required. The application is abandoned if the response is not timely. A timely reply with a petition for an extension, and a fee ranging from $50 to $3000, may prevent abandonment.
Once the reply is submitted to the USPTO, the examiner will look at the remarks and the amendments. The decision is final and denied if the design is found not patentable by the examiner. The examiner may also approve the application.
An inventor can appeal to the Patent Trial and Appeal Board (PTAB) if the application is abandoned.
If you have a new and improved invention or artistic design, consider getting a design patent.
At any time there is communication between a person and the USPTO, there should be the following information: Application number, Group art unit number (in the office action), Filing date, Name of the Examiner who prepared the Office Action, and The Title of the invention.
You may file a new application prior to abandonment of the original design patent which continues prosecution of the claim.
Having a design patent DOES NOT prohibit you from receiving copyright and trademark protection. See Copyright and Trademark.
Figure one– design patent drawing:
Notice: Drawing is in black and white. Shading that exemplifies curvature and angles. There is no “environmental structure”
Figure two: Here is an example of multiple angles required for a single article.
Notice: There is more than one angle of the dresser. Each angle shows different ornamental characteristics.
Remember, a design patent protects the ornamental character of the object. In the dresser example, it protects the unique design, not the utilitarian function of holding clothes or opening up.
*All images are from the United States Patent and Trademark Office website. We are not the owners nor the sole distributors of the images shown above.
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