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Design Patent - Requirements and Eligibility

Design patents do not cover the functionality of a product. A design patent is usually easier to get and less expensive than a utility patent. Though design patents provide less protection than utility patents, they may be valuable if you wish to prevent others from selling knockoffs and copycats that appear very similar to your protected product.
Before filing a design patent application, every inventor should conduct a design patent search. Let's have a look at the 12 different ways to do a design patent search to find a prior art.

Patents give legal protection to innovative, valuable, and non-obvious items or designs by prohibiting others from using, producing, or selling the invention for a set period of time after the patent is issued. A design patent, a utility patent, and a plant patent are the three basic types of patents issued in the United States. We'll talk about a design patent and how an inventor can get one to protect its creation.


A design patent is a type of legal protection given to an item's aesthetic design.


What is a Design and a Design Patent?

The visual ornamental characteristics embodied in or applied to a product of manufacture are referred to as design. The subject matter of a design patent application can relate to the configuration or shape of an object. The surface ornamentation is applied to an article or a combination of configuration and surface ornamentation. An ornamental surface design is inextricably linked to the article to which it is applied and cannot exist alone. It has to be a distinct pattern of surface ornamentation added to a manufactured item. Design patents cover ornamental designs in jewelry, furniture, beverage containers, and computer icons, among other things.


Design patents do not cover the functionality of a product. A design patent is usually easier to get and less expensive than a utility patent. Though design patents provide less protection than utility patents, they may be valuable if you wish to prevent others from selling knockoffs and copycats that appear very similar to your protected product.

George Bruce received the first design patent, U.S. Patent D1, in 1842. The design patent was for a new font.
In 1879, Auguste Bartholdi was awarded design patent U.S. Patent D11,023 for the Statue of Liberty. This patent covered the sale of small copies of the statue.

Apple Inc. owns various patents regarding the design of the iPhone smartphone line and its related products. Apple's original iPhone's first design patent was granted in 2008 (D558758).


The Coca-Cola bottle US Design patent number 48,160, granted to the Root Glass Company of Terre Haute, Ind. is one of the first examples of a beverage company differentiating itself by its packaging. The original patent is currently on display at the National Archives Museum in Washington, D.C.


What Kinds of Inventions Are Eligible for a Design Patent?

Any person who has invented any novel, original, and ornamental design for an article of manufacturing is eligible for a design patent under the patent law.


Two factors must be true in general for your design to qualify for a design patent:

  • The design is an integral aspect of the product and cannot be separated from it. A label design on a wine bottle, for example, would not be eligible for a design patent, but a distinctive design of the bottle itself may.

  • The design is merely decorative and has no bearing on the item's functionality.

First, you need to consider whether the design is eligible for patent protection. One or both of the following criteria must apply:

  • The surface of the item has unique ornamentation.

  • The shape or structure of the object has a unique design.

The design must also be:

  • Completely distinct and different from the prior art

  • Not obviously derived from other designs or resembling other designs.

  • Visible when the product is engaged in its intended use

What does a Design Patent Application Consist of?

When you start the patent procedure, you'll notice that you have the option of getting a provisional or non-provisional patent.


A provisional patent protects the applicant for a year while they sort out the details of their design. A non-provisional patent application is the first step in the USPTO process to determine whether the design is patentable.


Bibliographic data, claim, description, and drawings are the four primary components of a typical U.S. design patent

  • The first component of a design patent is called bibliographic data, and it contains several details like the inventor's name, assignee, and significant dates like the application and filing dates.

  • The claim part of a design patent is the second section, and it allows only one claim.

  • The third section is the description, which highlights the numerous views of the design patent drawings.

  • The drawings are the last and most important element of a design patent. This section summarises the claims made in the design patent.

Design Patents vs Utility Patents

A "utility patent" protects the way an object is utilized and works (35 U.S.C. 101), whereas a "design patent" protects the appearance of an article (35 U.S.C. 171).


If an article's invention is found in both its function and ornamental look, it may be granted both design and utility patents. While utility and design patents provide legally distinct protection, an article's utility and ornamentality are inextricably linked. Both practical and decorative aspects can be found in manufactured items.


The term of a utility patent on an application filed on or after June 8, 1995, is 20 years from the U.S. filing date; or if the application contains a specific reference to an earlier application under 35 U.S.C. 120, 121, 365(c), or 386(c), 20 years from the earliest effective U.S. filing date, while the term of a design patent is 15 years from the date of grant if the design application was filed on or after May 13, 2015. (or 14 years if filed before May 13, 2015). (35 USC 173, as amended by section 102 of the Patent Law Treaties Implementation Act, 126 Stat. 1531-32).


A utility patent includes a detailed technical description, illustrations (if applicable), and one or more claims. A utility patent's claims outline the invention's components and define the patent's scope. In contrast, the design patent relies heavily on drawings to describe what is protected.


Is it Necessary for You to Draw a Design for the Design Patent Application?

Drawings are used in patent applications to depict the design's appearance. The illustrations are more important than anything else in your submission.


Depending on your ability level, drawing your own design may not be sufficient. The best solution is to hire an expert to do the patent drawing or illustration for you.


What Should You Do Before Applying for a Design Patent?

Before filing your patent application, you should follow the steps outlined below to improve your chances of getting your design patent granted.

  • Ascertain that you have thorough documentation of your invention.

  • Check to see if your innovation qualifies for patent protection under the rules and laws.

  • Determine whether your invention has any commercial potential.

Design Patent Search

Before filing a design patent application, every inventor should conduct a design patent search.


The main goal is to ensure that your innovation qualifies as a novel. This will entail looking for similar inventions in U.S. and foreign patents, technical and scientific journals, and other publications. While conducting a patent search can be time-consuming, it is an important part of the process. This is an area where having credible patent professionals on your side can help. You might begin by conducting an online search and visiting the USPTO library. If you stumble upon comparable inventions, you must show that your new creation outperforms the prior ones.


You could submit an application for something that is patented without completing a full design patent search. Don't rule out the possibility of seeing a design on a product you've never seen before.


12 Different Ways to Conduct a Prior Art Search for a Design Patent

  1. Searching on Product Review Websites

  2. Product Prototype Search

  3. Searching for Prior Art in Product Design Drawings

  4. Searching manufacturer samples

  5. Browsing E-commerce Websites to Invalidate a Design Patent

  6. Geography Based Search

  7. Product Backtracking to Find Prior Art for Design Patent

  8. Google Lens

  9. Locarno Classification-based search (The Locarno Classification is an international classification system used to classify goods for the purposes of the registration of industrial designs.)

  10. Citation Analysis

  11. Keyword-based search

  12. Product Videos (YouTube, Facebook, WebArchive, and other social media platforms)

Filling a Design Patent Application

When the patent office receives a full design patent application, along with the required filing fee, it is assigned an Application Number and a Filing Date. The applicant receives a "Filing Receipt" including this information. After that, an examiner is appointed to the application. Applications are reviewed in the order in which they were submitted.


An examiner will then perform a search to ensure that the design fits the eligibility criteria and is not currently in use or patented. To finish the process of gaining patent rights, you will cooperate closely with the examiner. Throughout the procedure, you will have the opportunity to present your case. You can request reconsideration, revise the application, or appeal the examiner's judgement to the Board of Patent Appeals if your application is refused. Depending on the intricacy of the filing, the patent examination procedure might take anything from a few months to many years. The typical duration of time is about a year. The patent is publicised on the internet if it is awarded.


Design Patent Analysis

STATUS

COUNT OF DESIGN PATENTS

Active

1,08,49,780

Pending

48,198

Inactive

25,54,168

There are in total 1,08,49,780 design patents that are active. Many are inactive owing to the change in the market trend or shift in the technology and user preference. All these make the designs in question outdated and irrelevant. Hence there is no point in paying the renewal fees and keeping the design patent active.


It is evident from the number of pending patent applications that the process of design patenting is quite fast and that the grant rate is appreciable. This is because the USPTO has a good turnaround time when it comes to design applications.


Earlier, a part of a design (or 'a partial design') was not eligible for design protection in China. Article 2 of the new Patent Law stipulates that "A design means any new design of the overall or partial shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application." The amendment makes partial designs officially patentable in China. Another reason for the boom in the filings in China can be attributed to the fact that Design patents are generally cheaper to apply for, granted faster, and contain a relatively broad scope of coverage, while the invention patent is more expensive and takes longer to process.


Europe, Germany and the USA are the hubs of big tech names and have the highest market and growth opportunities. Big brands find it imperative to protect their designs in these jurisdictions owing to the importance and stance of these countries in the global trade scenario.

Design patent applications have seen a bumpy ride with a gradual increase in the filings seen in the initial years and a sudden dip in the eleventh year. Since Apple’s $500 million verdict against Samsung for infringing on their iPhone design patent, the increase in design patent filings tripled. People realized that filing early is critical for safeguarding the appearance of any product and that a design patent may be an important aspect of the intellectual property protection strategy before releasing a product with a distinctive appearance that could be targeted by counterfeiters looking to profit from the R&D. The rise in design patents filed were in line with the global trend. But a sharp dip in the number of filings was recorded which can be attributed to the fact that applicants have realised that a design patent provides only a superficial degree of protection as compared to a utility patent. Applicants today are keen on protecting the function along with the design.


Conclusion

Knowing how to patent a design is vital because it gives you legal ownership of your original design, the ability to use and sell it, and the right to benefit from the object's distinctive appearance. Whether or not you should file is mostly determined by the relevance and novelty of your product's presentation. Consider filing a utility patent application if the value of your product's look is minor compared to its purpose. On the other hand, a design patent may be valuable if you believe your product's appearance is unique and worth protecting from copycats.


References




Copperpod IP's design patent search focuses on the visual aspect of innovation and allows businesses or inventors to find relevant previous art or potential infringements. Our team finds appropriate design classifications and phrase sets to employ in developing a search strategy that completely covers all relevant design patents.

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