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To Seek Design Protection or Not, That is the Question!

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection.  This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.

There are two predominate types of patents: 1) utility patents that protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and 2) design patents that protect “any new, original and ornamental design for an article of manufacture.”  While both types of patents provide valuable IP protection, utility patent applications outnumber design patent applications by nearly 7 to 1 (e.g., 288,335 utility patent applications were filed in the U.S. in 2015 vs. 39,097 design patent applications).

In simple terms, a utility patent protects the way that an article of manufacture is used or functions, while a design patent protects the way the article looks.  A design patent may protect a variety of visual features of an article such as, e.g., the article’s shape, configuration, proportions, or surface ornamentation.  For example, design patents may be used to protect the overall look of cell phones, handbags, clothing accessories, jewelry, containers, housewares, product packaging, toys, medical devices, symbols, graphics and industrial equipment.

A design patent application has a simple structure that includes: a title, a brief description of the drawings, a single claim, a set of drawings.  The drawings are the single most important part of a design patent application because they ultimately determine the scope of design protection that may be obtained.  At a minimum, a design application will generally include a figure set with seven views of the article:  perspective, front, back, left, right, bottom, and top.  It is very important that the drawings be prepared by a qualified draftsperson.

The process of obtaining a design patent from the U.S. Patent and Trademark Office is typically straightforward, and a design patent application usually issues as a design patent much faster than a utility patent.  Once granted, a design patent provides a patent owner with exclusive rights to the patent design for 15 years from the date of grant.

Design patents offer a number of important advantages: 1) design patents issue rapidly, allowing a product to be protected quickly; 2) design patents are relatively inexpensive to obtain, and once issued do not require payment of maintenance fees; and 3) a product that is the subject of a design application may be marked with the term “patent pending” as soon as the design patent application is filed, thereby placing others on notice that protection for the product is being sought.

In conclusion, design patent protection should be considered whenever an invention has some visual or ornamental property of value, and may be used to complement utility patent protection or to cover aspects of an article that would not be easily protected by a utility patent.

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