What Is A Design?
A design is a combination of visual ornamental characteristics that are incorporated in or applied to an article of manufacture. It is a visual decorative feature that shows an article’s configuration, shape, or combination of configuration and ornamentation. Such a surface ornamentation design can only exist with the article it is applied to as it must be a clear pattern of surface ornamentation applied to an article of manufacturing.
The United States Patent and Trademark Office (USPTO) is responsible for patent-related duties. It examines patent applications and grants patents to inventions in the applicant’s best interests.
Patent law allows for design patents to be granted to anyone who has created a new, original, or ornamental design for an article for manufacture. The design patent covers only the appearance of an article and not its structural or utilitarian elements.
Types of designs
Design patents protect how things look rather than how they work. An ornamental design can be on the whole thing or just part of it. If it’s just on the surface, it needs to be shown on the thing in drawings. Each design patent application can only have one claim, which means you can’t claim two unrelated things in one application. If things are unrelated, like eyeglasses and a door handle, they need to be claimed in separate applications. If they’re related, like two vases with different designs, they can be in the same application.
The Difference Between Design and Utility Patents
The difference between design and utility patents is that a utility patent protects the way an item works, while a design patent protects the way an item looks. However, an article can be eligible for both utility and design patents if it is both functional and ornamental. Even though these patents provide separate legal protection, it can be difficult to separate the functional and decorative aspects of an object. Some items may have both functional and ornamental features.
A design patent cannot be granted for an article of manufacture that is primarily designed for its function and lacks ornamental features. This means that if an article’s shape or appearance is dictated solely by its function, then it cannot be patented. Additionally, for a design to be patentable, it must be original, which means it cannot copy a well-known or naturally occurring object or person. Finally, subject matter that may be considered offensive to a group of people based on race, religion, sex, ethnic group, or nationality is also not eligible for a design patent. These guidelines are set forth by 35 U.S.C. 171 and 37 CFR § 1.3.
Invention Development Organizations
Invention Development Organizations (IDO) are companies that help inventors bring their ideas to market and profit from them. However, not all of them are trustworthy, so you should be careful. Beware of IDOs that promote your invention without understanding its value and without presenting you with all your options, including the pursuit of a patent. Some IDOs may suggest that you pursue a design patent without explaining its limitations or purpose. Although design patents protect the appearance of a product, they may offer limited protection if there are only minimal differences between similar designs. Therefore, you should understand the difference between utility and design patents and determine which one is appropriate for your invention.
Elements of a Design Patent Application
- Introduction – This includes the applicant’s name, the title of the design, and a brief description of the article’s nature and intended use.
- Cross-reference to related applications (if applicable), which should be included in the application data sheet.
- Statement about federally sponsored research or development.
- Description of the figure(s) of the drawing.
- Feature description.
- A single claim.
- Drawings or photographs.
- Executed oath or declaration.
Furthermore, the filing fee, search fee, and examination fee must be paid. If the applicant is a small entity such as an independent inventor, small business concern, or non-profit organization, these fees will be reduced by half.
The Design Patent Application Process
Getting a design patent in the US involves knowing patent law, rules, and Patent and Trademark Office procedures. The best way to ensure maximum patent protection is to hire a patent attorney or agent who is specially trained in this area. It is advisable to seek the services of a registered patent attorney or agent, but representation is not mandatory. A knowledgeable applicant can pursue their own application, but without the right skills, there is no guarantee that the patent obtained will effectively safeguard the design.
The most critical aspect of a design patent application is the drawing disclosure, which illustrates the claimed design. Unlike a utility application, where the invention is described in a lengthy written explanation, the claim in a design patent application protects the design’s overall visual appearance as represented in the drawings. The applicant must present a set of drawings or photographs of the highest quality that adhere to the rules and standards outlined in the guide.
Any changes made to the drawings after filing the application may introduce a new matter, which is not permitted by law (35 U.S.C. 132). Therefore, it is crucial for the applicant to ensure that the drawing disclosure is clear and complete before filing the application to avoid a fatally defective disclosure that cannot become a patent. To this end, it is advisable to hire a professional draftsperson who specializes in preparing design patent drawings.
Filing An Application
Apart from the drawing disclosure, some other details are also necessary for a design patent application. Although no particular format is mandated, it is recommended that applicants follow the suggested formats to ensure completeness.
Once the Office receives a comprehensive design patent application, along with the relevant filing fee, it is assigned a Filing Date and an Application Number. The applicant is sent a “Filing Receipt” with this information. The application is then allocated to an examiner and processed based on the order of their filing date.
Examination
During the examination of a design patent application, the examiner will check for compliance with formalities, and completeness of the drawing disclosure, and compare the claimed subject matter with prior art. If the claimed subject matter is patentable, the application will be allowed. However, if the examiner finds the disclosure unclear or incomplete or if prior art shows the design is unpatentable, the examiner may reject the claim and issue an Office action. The applicant must submit a timely written reply to the action, including a request for reconsideration, amendments, and addressing every objection and/or rejection in the action. If the reply is not received within the designated time period, the application will be considered abandoned.
Response
When an applicant receives an Office action after submitting their patent application they must reply in writing, including a request for reconsideration or further examination of the claim, and any amendments desired, and must specifically address each objection or rejection in the action. The reply must also include certain information, such as the application number and filing date. The reply must be received by the office within the designated time period, or the application will be considered abandoned. If the applicant cannot reply within the time period, they may file for an extension of time, but fees apply.
Reconsideration
After submitting a reply to an Office action, the examiner will reconsider the application and examine it again based on the applicant’s remarks and any amendments made. The examiner may either allow the application if persuaded or repeat the rejection and make it final if not. If given a final rejection or if the claim has been rejected twice, the applicant can file an appeal with the Patent Trial and Appeal Board (PTAB). Alternatively, the applicant can file a new application before the original application is abandoned and claim the earlier filing date to continue the claim’s prosecution.
Patent Laws That Apply to Design Patent Applications
35 U.S.C. 102 Conditions for patentability; novelty and loss of the right to patent
To get a patent, your invention must be new and not known or used by others before you apply for the patent. It can’t have been described in a publication or sold or used publicly more than a year before your patent application. You also can’t have given up or abandoned the invention, and it must be something you actually invented yourself. There are also rules around interference proceedings and determining who invented something first.
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter
The invention should not have been previously disclosed in a way identical to Section 102 of the patent law, and the differences between the invention and prior art must not have been obvious to a person with ordinary skill in the relevant field at the time of its creation. If an applicant chooses to proceed under subsection (b), a biotechnological process that produces a novel and non-obvious composition of matter can be considered non-obvious. Subject matter developed by another person that qualifies as prior art under certain subsections of Section 102 will not prevent patentability if it was owned by the same person or subject to an obligation of assignment to the same person at the time the invention was made under a joint research agreement.
35 U.S.C. 112 Specification
The specification should include a clear and concise description of the invention and how to make and use it so that someone skilled in the relevant field can understand it. The specification should also include a claim that distinctly identifies the subject matter of the invention, and multiple claims may be written in either dependent or independent form. Dependent claims refer back to a previous claim and add additional limitations, while multiple dependent claims refer to more than one previous claim. Additionally, a claim for a combination may be expressed as a means for performing a function without specifying the structure or material used.
35 U.S.C. 132 Notice of rejection; reexamination
the procedures for patent examination and reexamination. If a claim is rejected or an objection is made, the Director will notify the applicant of the reasons for the decision and provide useful information and references. If the applicant persists in their claim for a patent, with or without amendment, the application will be reexamined. Amendments are not allowed to introduce new material into the invention’s disclosure. Additionally, the Director can establish regulations for continued examination of applications at the applicant’s request, with appropriate fees. Small entities that qualify for reduced fees under section 41(h)(1) of the title may receive a 50 percent reduction in such fees.
35 U.S.C. 171 Patents for designs
an individual who invents a new, original, and decorative design for a manufactured item can obtain a patent, subject to certain conditions and requirements. The regulations and rules for patents for inventions also apply to patents for designs, except where otherwise noted.
35 U.S.C. 172 Right of priority
for designs, the right of priority provided by certain subsections of section 119 of the title and the time specified in section 102(d) is limited to six months. The right of priority provided by section 119(e) of the title does not apply to designs.
Does a design patent cover the type of material?
Design patents cover the ornamental features of a product while utility patents cover a product’s functionality. But what if the uniqueness of a product is in the material it’s made of? What happens?
First, consider adding descriptive material terms to your design patent title such as “WOODEN” or “RUBBER” to describe the product’s material. However, be mindful that limiting your design patent to a specific type of material may not be advantageous if competitors copy your design using a different material. To avoid creating opportunities for competitors to avoid your patent, be cautious about restricting the scope of coverage unnecessarily.
Additionally, if only certain components of your product are made of a particular material, specify those parts and their composition in your design patent title. For example, you can title your design patent application as “[product] WITH GLASS [components]” or “GLASS [components]” if you are not claiming the overall product.
In design patent drawings, transparent material like glass can be depicted. It is crucial to collaborate with a patent attorney and inform them of materials that give your design a distinctive look. The attorney can then guide the illustrator to create drawings that accurately represent the unique features of your design. A knowledgeable attorney and skilled illustrator can work together to ensure that design patent drawings showcase specific materials whenever feasible.
Here’s how to show different materials in design drawings
Conclusion
Filing a design patent can be a complex and time-consuming process, but it is essential to protect your intellectual property and ensure that your designs are not copied or stolen. The first step is to conduct a thorough search to ensure that your design is unique and does not infringe on any existing patents. Next, you should create detailed drawings or photographs of your design, including multiple views and angles.
Once you have prepared your design documents, you will need to submit your application to the United States Patent and Trademark Office (USPTO) and pay the required fees. It is important to follow all of the USPTO’s guidelines and requirements, as any mistakes or omissions could result in your application being rejected.
After you have submitted your application, it will be reviewed by a patent examiner who will determine whether your design meets the requirements for patentability. This process can take several months or even years, but once your patent is granted, you will have exclusive rights to your design for a period of 15 years.
In summary, filing a design patent requires careful planning, attention to detail, and adherence to all relevant guidelines and regulations. By taking the time to protect your designs, you can ensure that your intellectual property is safe and secure.
