Design Patent FAQ

Protect ornamental designs with a design patent

An ornamental design may be embodied in an entire article or only a portion of an article, or may be ornamentation applied to an article. Patentable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.

The focus is on protecting the pleasing aesthetic appearance of the article where such design is not dictated by functional considerations. To qualify for design patent protection, the design must be definite and reproducible, novel/original and non-obvious. When we think of ornamental design, we generally think of things of beauty. However, design patents are available for mechanical devices that “eliminate the unsightly repulsiveness that characterizes many machines and mechanical devices which have a tendency to depress rather than excite the esthetic sense.” For example, concrete mixers have received design protection on this basis. Design patent protection may be available for portions of an article of manufacture. For example, design patents have been granted for the shank portion of a drill. For example, consumers may recognize and desire a unique design in an entire line of tool products. A confusingly similar design might detract from their identification of the desired product and cause them to select an inferior quality copycat design.

The Difference Between Design and Utility Patents

In general terms, a “utility patent” protects the way an article is used and works, while a "design patent" protects the way an article looks. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

Design patents protect purely ornamental features of articles of manufacture and cannot be dictated by utilitarian motives. It must be issued for an article, however. It is also important that the design be repeatable. If an object’s ornamental features have a functional aspect, then a utility patent is the proper route. For example, an ergonomic design of a screwdriver that is also an esthetically appealing design must be protected by a utility patent because the design elements have functional characteristics.

To qualify for a design patent, an ornamental design for a utilitarian article must be novel (that is, no identical design exists already) and must be original to the inventor seeking protection. It must also be “unobvious” when considering any previously existing design or combination of designs when viewed through the eyes of a hypothetical designer “of ordinary skill in the art.” Other keys to protection include the visibility of the ornamental features when the article is in use and that the features have some aesthetically appealing characteristic and artistic conception.

Effective protection at the early stages of product life cycle

Design patents can be effectively used to protect consumer appealing product designs before trade dress protection can be accorded under trademark law. It generally takes a significant period of time and marketing endeavors for secondary meaning, or consumer recognition, to attach to a product’s trade dress.

Design patents prohibit a third-party from making, selling or using a product of the protected design. To infringe a design patent, the infringing container and the container shape shown in the design patent must look alike to the eye of the ordinary observer.

The Patent Application

The same substantive and procedural rules apply to design patents. Full disclosure and definiteness is provided through the drawings. The drawings that accompany the specification typically include at least 7 drawings: each side of a cube and one of the article in use. The United States Patent and Trademark Office has very specific criteria for design patent drawings. It is recommended that such drawings be professionally prepared by a qualified professional.

Design patents generally issue quicker than utility patents

According to Dennis Crounch’s study of design patent pendency on Patently O, the average pendency in 2000-2007 was around 16 months, with the range from 9 to 21 months for selected corporations. This is down dramatically from 30 months in the 1990’s.

Design patents increasingly play an important role in intellectual property protection strategies

Design patent applications have doubled in the past decade. According to Dennis Crouch of Patently O, design patents are no longer the province of independent inventors. The most design patents in the past decade have been issued to corporations such as Nike, Samsung Electronics, Motorola, Sharp, and Canon.

In some circumstances, design protection might be a viable alternative in cases where utility protection is not available because of novelty or obviousness reasons.

Beware

There is a big difference between the scope of protection and the term of a design and utility patent. It is important to realize that a design patent may not give you the protection desired. An unscrupulous invention promotion company may mislead you by telling you that you can obtain or have a patent, but do not explain the differences in the scope of protection offered by each type of patent. We encourage you to speak with our patent attorney or a patent agent to understand all of your options for protection.

Improper Subject Matter for Design Patents

A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. Specifically, if at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and is not proper subject matter. In addition, 35 U.S.C. 171 requires that a design to be patentable must be “original.” Clearly a design that simulates a well-known or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent application (35 U.S.C. 171 and 37 CFR § 1.3).

Things not eligible for design patent protection include things not intended to be visible in actual use, offensive designs and functional designs. The first factor has been the subject of litigation and the test that evolved was whether in some point of commercial life, design is a matter of concern. (Take for example, lingerie, garment hangers, tent pegs, inner sole for shoes and prosthetic bone implants – all things that are hidden from view during use.) In assessing functionality, it is critical to understand that it is the functionality of the design, not the article of manufacture itself. A key inquiry is whether there are several ways to achieve the function of the article.

Infringement of a design patent

A design patent gives the right to prevent others from making, using, importing or selling a product that so resembles the patented product that an "ordinary observer" (a retail purchaser of the goods) might purchase the infringing article, thinking it was the patented product. Thus, a design patent can prevent confusingly similar copycat products. This protection may bolster trademark protection also available for consumer identificable design or trade dress.

An infringement analysis comparison is not made on a side-by-side basis. The test involves a hypothetical ordinary observer who, being aware of the patented design (he need not know it was patented, just be aware of the design itself), encounters the allegedly infringing design for the first time as it would appear in use. We assume that this ordinary observer pays as much attention as one would typically use in deciding to purchase such a product. Thus, we assume that the purchaser of an item for $1.00 spends a brief time viewing the product prior to purchase but that the purchaser of a $20,000 automobile would spend a significant amount of time viewing the article prior to purchase.The fact finder will make the determination of how long this hypothetical ordinary observer would spend on the hypothetical transaction. One looks at both the similarities and differences between the patented and allegedly infringing products to determine if there is sufficient overall similarity to deceive the ordinary observer.

Design Patents and Other Intellectual Property Protection

Design patent protection may complement and bolster trademark protection, unfair competition and trade dress protection. They involve similar concepts in the tests for infringement, but provide very different protection and enforcement means for the inventor. An inventor should seek the counsel of his attorney to evaluate the several options available and determine a strategy for protecting these property assets.

An inventor must elect between copyright and design patent protection because of the different terms of protection, different penalties for infringement, and different procedures for procuring protection.