Understanding the benefits afforded by design patents will help you make an educated decision as to whether a design patent is the right choice for you.
Design Patent vs. Utility Patent
A design patent protects the ornamental design (shape, configuration, and/or surface ornamentation) embodied in or applied to an article of manufacture. In other words, design patents solely protect the visual characteristics or appearance of the product, not its function. The design must be inseparable from the article; it cannot exist independently. If the design is solely artistic and can be separated from the article, it would only qualify for copyright protection.
A design patent, like a utility patent, must meet statutory requirements to be patentable, including that the design is novel, non-obvious, and filed within one year of public disclosure.
Design patents can prevent the sale of “knock-off” products. Courts use the “ordinary observer” test to determine whether a product is infringing on a patented design. (See Egyptian Goddess, Inc. v. Swisa, Inc.) Under the “ordinary observer” test, infringement occurs if the designs are “substantially the same” to an ordinary observer, such that it induces the observer to purchase one product believing it to be the other product. Similarities in the overall designs are compared instead of comparing the ornamental features in isolation.
A utility patent protects the use or function of the invention, not the design. A utility patent provides greater protection, allowing you to prevent others from making, using, or selling any product that infringes on the claims of your invention, even if a competitor changed the appearance of the product.
Given that a utility patent provides greater protection, why would you consider a design patent? First, it does not have to be one or the other. If an invention is unique in both function and appearance, you may want to consider applying for both a utility and a design patent to broaden your protection. The list below highlights some of the main advantages of design patents.
Design Patent Benefits
- Less Expensive: The cost of filing a design patent is significantly less expensive than a utility patent in both attorney fees and the fees charged by the USPTO. Average attorney fees range from $1,500 to $3,000, which includes the cost of professional drawings.
- Quicker Processing Time: Design patents can be processed in approximately 14 months, whereas utility patents typically can take 3 years or longer.
- No Maintenance Fees: Unlike utility patents, design patents do not have maintenance fees. Utility patents have maintenance fees due at 3.5, 7.5, and 11.5 years.
- “Patent Pending” or “Patented” Notice: You are allowed to use the coveted “patent pending” or “patent” notice on your product. This is a great tool for marketing purposes and to deter infringement.
- Protection if Your Invention Does Not Qualify for a Utility Patent: Your invention may satisfy the requirements for a design patent, but not a utility patent, if the design of your invention is novel and non-obvious.
- Prevents Knock-Offs: Given that a design patent protects the visual appearance of your product, you will be able to prevent knock-offs from being sold in the U.S.
- 15 Years of Protection: A design patent affords you a 15 year monopoly on the design of your invention from the date of issue.
- Graphical User Interface (GUI): Design patents are increasingly being utilized to protect GUI designs, such as the designs we encounter every day on our smartphones and apps. Apple demonstrated how valuable a design patent can be when it was awarded millions for Samsung’s infringement of U.S. Patent No. D604,305.