Why would anyone want a design patent? Design Patents Part One: US patent system
written by Elizabeth Gearhart, Ph.D., Patent Agent at Gearhart Law
Why would anyone want a design patent?
Caveat: the protection from a design patent is very narrow compared to a utility patent.
Compare a typical design patent application to a typical utility patent application:
Type Design Utility
Time 8 months 2 ½ to 5 years
Cost ~$2000 ~$10,000
Protection limited scope broad scope
What is a design patent?
A design patent covers the ornamental design of a product, and only the exact design shown in the drawings. A utility patent covers the utility of your invention, ie: the useable features that make it unique. A link to an example of one of Apple’s design patents is below. A design patent has one claim, claiming the ornamental design, and many figures, or drawings, of the design showing all parts of the object: front, back, both sides, top, bottom, and other views as necessary. The design patent in Fig. 3 of the link below covers the look of the phone, but not any of the functions. It shows a round button, so the phone can have a round button, but it doesn’t cover what the button actually does. It wouldn’t cover a phone with a rectangular button. A design patent is differentiated from other patents with the designation of “D” before the patent number.
Here’s a link to Apple’s US Patent D593087:
Why file a design patent application?
Two good reasons for the typical entrepreneur: time and money.
A design patent costs much less than a utility patent and is issued much sooner. Allowance of design patents normally takes about 8 months but can they be processed much sooner. For instance, a recent design patent application filed by Gearhart Law received a notice of allowance just 2 ½ months after filing. The inventor then paid the issue fee and the patent published shortly thereafter. It may cost up to $10,000 or more over 3 ½ years to get a utility patent, what with attorney fees and government filing fees. The utility patent results in very broad protection for your invention; particularly protection for the function of the invention. In most cases, inventors try to obtain a utility patent if possible. While very narrow, a design patent normally costs less than $2,000. Both types of patents have their place depending on your intellectual property strategy.
You may also decide to file a design patent application if you feel you won’t be able to get a utility patent allowed, but you still need protection for your invention. In that case a design patent (and possibly a trademark too, but that’s a story for another day) is your best option. Or you may have a design that you just don’t want others to copy, and you don’t even need or want a utility patent. Or, you’re covering every aspect of your important invention that you can, so you have maximum protection in a number of infringement areas. In that case you would file for both utility and design patents.
The Power of the Design Patent in Action
A famous, or infamous, as the case may be, example of a design patent offering an extreme level of protection is seen in the many lawsuits between Apple and Samsung. Apple filed an application for a design patent which was granted on May 26, 2009 as US patent D593087. There’s a link to it above. It was for the design of a smart phone outer casing, just how it looked, not any of the electronics or function. Of course those were covered in utility patents by Apple. Apple decided to sue Samsung for infringing on their design patent (among others), and they won! On August 24, 2012, the jury found that Samsung had infringed on a number of Apple’s patents, including patent D593087. Apple had also received a patent on a basic rectangle (D504889) and decided to argue infringement on it too. The defense argued that it would be ridiculous if Apple could corner the market on rectangles. The jury and most of the rest of the world agreed. Apple lost that one.
I hope this helped; if you have further questions, please don’t hesitate to email us at email@example.com
Visit our blog next week for Design Patents Part 2: Foreign Filing Design Patent Rules