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Design patents in the United States

July 25, 2023

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‍This article is written by Palak Poddar, a law graduate of Banasthali University, Rajasthan. This article explains in detail about the various concepts dealing with design patent in US, famous examples of deisgn patents, common misconceptions between design patents and utility patents, their benefits, relevant case laws, how to obtain a design patent, legal provisions applicable to design patents as per US Code, design patent infringement and tons of FAQs that one may have regarding design patents.

It has been published by Rachit Garg.

Table of Contents

Introduction

Every product created in the market has a unique and different shape, color, size, or pattern, right? You can look around yourself to find any of such products even now. Look around and see there are various companies that have great and unique designs created for their product. But wait, have you ever wondered if competitors of these companies can replicate those designs and earn profits from them? The answer is yes, of course, they can, but only if any company hasn’t patented their design yet. Whether we talk about the most iconic Apple iPhone design, refreshing Coca-Cola bottle, or your favorite Nike sneakers they all have one thing in common: that is their designs are patented. So, next time you admire a beautifully designed product, remember that it is a strategic decision of a company that knows the importance of protecting its design through patents.

In the dynamic and competitive market, it is a high probability for companies to face the constant threat of duplication and forgery. With no protection of design patents, any brand has to bear a huge amount of loss. But what exactly is a design patent? What are the benefits that come with it? How can one get their design patented in the US? Also, what happens if someone violates your design patent rights? If you are also curious about such questions, read further. In this article, we have exhaustively covered all the necessary points that you should be knowing related to the topic of design patents in the US.

Design patents are a type of intellectual property that grant rights to the original inventor or designer to the way the product looks. It is a form of protection for the unique and attractive appearance of a product. It can safeguard your innovation and enhance your brand value. But they also come up with challenges and limitations that you should be aware of. If you are also willing to start your business in the US or want to know how these big brands create their brand value, continue till the end of this article. The topic has been broken down into simple and easy-to-understandable terms for you to understand it.

What is a design patent

Design patents are a form of intellectual property that protect the aesthetic and ornamental features of an invention. It is a special type of patent that covers how something looks rather than how it works. It protects the unique visual appearance of a product or item. The inventors can typically use design patents to protect the look of a product, such as the shape of a jewelry case, the design of a phone case, or the pattern of a fabric. The main focus of this patent is on shape, configuration, patterns, or surface ornamentation rather than its functional aspect. It can be a powerful tool for businesses and investors alike. Since a company invests a lot of money in a design of a product they generally look for a return on their investment by restricting others from making, selling, or using that product design. Once the inventor takes the right to its product design, no other person can replicate those designs without the prior permission of the inventor. Design patents are made to protect industrial designs and thus anyone who is the original inventor of the product can claim it.

In the United States, original design makers can obtain this right from the United States Patent and Trademark Office (USPTO). USPTO has the power to grant design patents to the inventors with a 15-year term of protection.

Examples of Design Patent

Design patents are used by various popular brands across different countries belonging to different industries. These brands want to protect their unique and recognizable product design. By securing their rights with design patents these brands build their brand value and uniqueness in the market. Their product is now different and recognized by the customers as well. From technology, beverage, and fashion to footwear industries, you’ll find a lot of examples related to product design patents. Here are some examples of common and well-known brands for you that have built brand recognition by obtaining design patents:

Apple’s Iconic iPhone

No wonder why the iPhone has been popular among people. The brand really did well for its customers. Its rectangular shape, round corners, iconic home button, and arrangement of user interface elements all have been protected by design patents.

Dolce and Gabbana’s Luxury Handbag

The luxury fashion accessory brand has obtained a design patent for its exclusive handbag design. The patent covers the ornamental features of the bag such as its shape, hardware details, embellishments, and signature patterns that makes the bag looks different, unique, and stylish.

Coca-Cola Contour Bottle

The contour bottle design of your favorite beverage Coca-Cola is also patented under a design patent. The bottle’s different shapes, curved body, and embossed mark on it are easily recognizable about the brand whenever we see any such bottle.

Rolex’s Watch

Renowned watchmaker Rolex also has a design patent for its watches. These patents protect the visual elements, including the shape of the watch case, the arrangement of the dial, and the design of the bezels and bracelets. All these elements will be exclusive to Rolex watches only.

Nike’s Air Jordan Sneakers

Your most popular Nike brand also granted design patents for their Air Jordan Sneakers design. This patent protects the different elements of the sneakers such as silhouettes, color schemes, and branding details such as the inspired Jumping Man logo. This design will only be seen in Nike’s shoes and no other person can use it without the prior approval of the company i.e. the owner of the design patent.

Differences between a design patent and a utility patent

In the US along with a design patent, there are other two patents that are granted to protect intellectual property rights. These two are utility and plant patents. Though there are specific purposes for each of these patents, this is a general misconception between utility and design patents are similar. A utility patent is typically the common type of patent that people generally apply for in the US. This patent focuses on the functional aspect of the product and promotes technical innovation. Here’s a detailed comparison to highlight the difference between both the patents:

Basis	Design Patent	Utility Patent
Purpose	Protects how an article looks	Protects how an article is used and works
Duration	Valid upto 15 years from the date of grant	Valid upto 20 years from the date of filing
Focus	Focuses on aesthetic and ornamental features such as shape, patterns	Focuses on functional feature, operative structure, specific features
Examples	Consumer products, products packaging, Graphic User Interface (GUI), jewelry features, clothing design	Machines, Pharmaceutical formulation, manufacturing process, software algorithm
Requirement to obtain	New, original, and primarily ornamental	New, useful, non-obvious
Costs	Generally less costly in comparison to utility patent	More costly than a design patent
Maintenance fee	Not required	Less required
Difficulty in obtaining	Easier in obtaining design patent in comparison with a utility patent	More difficult in obtaining than a design patent

Benefits of design patents

Design patents are a powerful tool for businesses, inventors, or designers. Obtaining a design patent can be a valuable investment for those who specifically rely on the visual appearance of their product. There are various advantages to obtaining a design patent. Here are some of them:

Exclusive ownership right

A design patent grants the owner exclusive right over its product design i.e., on the visual appearance of the product. This simply means that no other person can buy, sell or use this patented product design apart from the owner itself. In case anyone wants to buy, sell or use that design that person needs to take prior permission from the owner of the product. It protects the owner legally and prevents unauthorized copying of that product.

Brand protection

Apart from product design protection, design patents also help in maintaining brand reputation and contribute towards it. It helps in building and establishing a strong brand identity as it safeguards the visual features of products through which a customer is associated. This protection discourages people from copying or replicating and can further enhance brand values and integrity associated with the product.

Distinct market identity

The one thing that can set a product apart from its competitors is its visually appealing design and uniqueness. If any inventor is taking design patents, they can differentiate their offerings from the other competitors in the market and thus create a distinct market identity. This can also help in increasing recognition for your brand, building loyalty to your customer, and succeeding in the market.

Return on investment

With the help of a design patent, you can also get a good return on your investments if your protected design gets popular or is high in demand. After securing exclusive rights to your unique design, you can start capitalizing on the commercial success of your product which will increase sales and profitability.

Legal protection

Obtaining a design patent can also provide legal protection to enforce intellectual property rights. In the case of infringement or violation of intellectual property rights, the original inventor can take legal action to avoid unauthorized usage of its design. This fear of being liable for the consequence of a breach can intimidate wrongdoers and further discourage them.

Licensing and royalties

Once the inventor obtains a design patent, it can license or sell it to other parties. This allows the patent holder to generate additional revenue or income from the same invented design. The patent holder can grant permission to any third party whomsoever he wants to use his protected design in exchange for fees or royalties. This can be further protected by the licensing agreement. Using a legally backed document can secure you and can also increase opportunities for your inventors and designers looking to expand their business or looking for new opportunities.

Provisions related to design patents in the US

A principal Statute of the United State Code deals with patent law under Title 35. It governs all the aspects of patent law in the State of America. These provisions are applicable to the design patent application as well. Several provisions that specifically govern the Design patent are mentioned below:

35 USC 171. Patent for Designs

This provision of USC 171 says that anyone who invents a new, original, and ornamental design for an article of manufacture can obtain a design patent for that design. This simply means that every individual who creates a unique and visually appealing design for their product has the opportunity to protect their design through design patents.

The essential criteria for obtaining a design patent under this provision are specifically mentioned which are novelty, originality, and ornamentation. The design which you want to be patented should be new and different from the existing designs. Also, it should display a level of creativity and uniqueness in itself. Along with this, the design should also have an ornamental aspect attached to it, which has to be an aesthetic appeal or design with decorative quality.

This provision offers legal protection to the patent holder by granting an exclusive right over his design and prevents others from making, using, or selling that design. Once the right has been granted to the patent holder, no other person can use it without the permission of the original patent holder.

35 USC 172. Right of priority

Meaning

“Right to Priority” under provision 172 of the US Code deals with the concept of priority in the patent application. This allows a patent application to get the benefit of a filing date on an earlier filed foreign application when filing a correspondence application in the United States. In simple terms, the patent application will get priority treatment if the same application has been filed earlier in some other country. Applicants can get a patent in the US also, even if the invention has been disclosed earlier in some other country by way of an application.

Limitation Period

There is some limitation period given under this provision to claim the benefit of the “right to priority”. It says that to claim right to priority, the design application has to be filled within six months of the filing date of the foreign application.

Requirements

Under this provision, few requirements have been given in order to claim the benefits of the “Right to Priority” with regards to provisions given under subsection (a) to (d) of 35 USC 119.

(i) The current application has to include references related to the earlier filed patent application and details about the application number, filing date, intellectual property authority, or country in which the earlier application was filed. The earlier claim also has to be filed in the Patent and Trademark Office.

(ii) Application has to be filled by the same inventor, assignee, or legal representative who has previously filed a patent application in some other country.

(iii) Application filed for the invention has to be the same invention for which the earlier application was filed. The subject matter i.e. invention of both the applications has to be the same.

(iv) Earlier Application has to be filed in the country that is a member country of the Paris Convention for the protection of industrial property. The application should be entitled to get the benefits of the Paris Convention on the date of filing of such application.

35 USC 173. Term of Design Patent

Section 173 of the code defines the duration or term of protection granted by a design patent. It says that the term of the design patent will be 15 years from the date of grant of the patent. In simple terms, it means that once the design patent has been granted by the United States Patent and Trademark Office (USPTO), then the patent holder has the exclusive right to sell, use, make, or import the design for a period of 15 years. It is important to keep in mind that the term of the design patent begins on the date of grant of the patent and not from the date of filing.

After the completion of a period of 15 years, the design has public access and is no longer protected by patent rights. Once completed the tenure, anyone can incorporate expired patented designs in their product and earn revenue out of it.

35 USC 102. Conditions for Patentability, Novelty

This provision of USC 102 states the requirements that an invention has to meet in order to be considered novel and eligible for patent protection. The criteria are to determine whether a certain invention is new and original and is considered to be novel.

This section has four subsections defining the different ways in which an invention can be considered novel. It says that any invention is not considered novel if:

(i) An invention was patented or described in a printed publication in the US or any other country before the effective filing date of such invention. In simple terms, if any invention was publicly disclosed, known, or used by others before the filing date, it would not be considered novel.

(ii) An invention described in the patent application was filed before your invention, and that patent application was filed in the name of some other inventor.

(iii) An invention has already been disclosed by an inventor or joint inventor or by someone who got the information directly or indirectly from the inventor or joint inventor, within 1 year or before the effective filing date of the claimed invention.

(iv) An invention has already been disclosed directly or indirectly by the inventor or joint inventor or by someone who got the information directly or indirectly from the inventor or by the joint inventor before the effective filing date.

(v) If the subject matter disclosed and the claimed invention is owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention.

An exception to JRA Parties

Section 102 (C) of this code talks about exceptions to the 1 year grace period for disclosure made by Joint Research Agreement parties (JRA). It specifically mentioned that disclosure made by the JRA party within one year of the filing date of the claimed invention will not consider prior art if the following undermentioned conditions are not fulfilled:

(i) If disclosed subject matter was developed and the invention claimed was made by one or more parties by JRA before the effective date of the claimed invention

(ii) If the claimed invention was a result of activities that fall under the scope of Joint Research Agreement (JRA).

(iii) If the patent application for the claimed invention discloses the name of the parties to the JRA

35 USC 103. Conditions for Patentability, Non-Obvious Subject Matter

This section of USC 103 talks about the requirements for non-obviousness that needs to be met if any invention wants to be considered patentable. There are certain criteria given to determine whether an invention involves an inventive step or not. The step has to be something that is beyond obvious to a person skilled in that relevant field.

Meaning of the word “Non-Obviousness”

The word “Non-Obviousness” under the patent law refers to the term that says an invention has to pass an inventive step or a level of creativity that a person must have if he is skilled in the relevant field during the time of invention.

The analysis of obviousness involves two steps. Firstly, the prior art has been reviewed to identify the relevant references involved. Secondly, the claimed invention is compared with the prior art in order to determine whether the difference between them would have been obvious for the person having ordinary skills in art or not.

In simple words, an invention is considered to be “non-obvious” if it goes beyond what a skilled person in that field considers to be an obvious or predictable solution based on the previous technology, invention, and knowledge.

Factors determining “non-obviousness” of an invention

Level of skill in the prior art
Quantity and quality of the prior art
Difference between the prior art and claimed invention
Commercial success and result involved in claimed invention
Failure of others to determine same results
Difficulty in achieving claimed invention

35 USC 112. Specification

This section of the US Code 112 provides requirements of a specification or written description for an invention in a patent application. It clearly mentioned that a written description of an invention has to be full, clear, concise, and in exact terms that enable one to understand and reproduce the invention further. It ensures that the investor should disclose his invention in clear language and with particular details so that anyone who belongs to that field can understand it and use it for the benefit of the public. The language of the written description should be crafted so meticulously that it allows one to convey the invention’s structure, function, and method of operation.

Conclusion & Form

The conclusion of a written description of an invention should include claims that the inventor believes in with respect to its invention. Claims are nothing more than written statements that specify the subject matter of an invention. Claims can be independent, self-explanatory to define the invention on its own or they can be in multi-dependent form, meaning referring to some other claims by adding more details to them.

Claim in Dependent Form

When a claim is written in dependent form, it simply means that it is referring back to a previously mentioned claim and adding more details or limitations to it. The limitations of the dependent claim are referred to as part of the dependent claim.

Claim in Multi-Dependent Forms

A claim in multiple dependent forms refers to more than one previously mentioned claim and adds a limitation to its subject matter. Multi-dependent form claim does not serve any other multi-dependent claim. The limitation of this claim is considered part of multi-dependent claims.

Claim in Combination Form

A combination form is a claim for a combination of elements that can be described in terms of its functions without stating specific structure, material, or acts supporting it. This type of claim is interpreted to cover the corresponding structure, material, and acts that describe the specification and their equivalents.

How to get a design patent

If you are planning to obtain a design patent in the US you must have heard about the United States Patent and Trademark Office (USPTO). If not, USPTO is a federal agency in the United States that has the authority to grant patents and register trademarks to the people. It is the primary authority that deals with the matter of intellectual property rights in the State of America. It has set some guidelines on how a person can obtain a design patent. Here’s the step-by-step guide for you on how you can obtain a design patent in the US:

Check requirements and eligibility for a design patent

After you prepare your design, the primary step you need to do is adhere to the requirements that are given by USPTO for a design patent. As discussed before in provision 35 USC 171, the article of manufacture must have a new, original, and ornamental design to get the approval for a design patent. If any design lacks that then it will not be considered as a proper subject matter for obtaining a design patent. In addition to this provision, there are also some guidelines mentioned under Chapter 1500 of the Manual of Patent examining procedure (MPEP) that provide the criteria for patentability and substantive examination requirements. Moreover, any subject matter that is offensive to any race, religion, sex, ethnic group, or nationality is not a proper subject matter for obtaining a design patent, as mentioned under 37 CFR 1.3.

Do a preliminary search

Before filing an application to the USPTO, you must check if your invention has not been disclosed by someone else. You can’t obtain a patent if the design has already been publicly disclosed by the other party. Your invention has to be new and original in order to obtain a patent. A preliminary search to check if your invention has any other similarity with the prior art can be helpful for you. This search further can be helpful for you while the patent examiner is evaluating your example. It is the duty of every individual who plans to obtain a patent to disclose all the information, including prior art close to the invention in the preliminary search itself. Those who fail to do so get rejected by the patent examiner. You can take help from the online available tools mentioned below to get the search done quickly. These tools are authenticated as they are given by USPTO.

Appoint IP attorney or agent

You can also consider appointing a registered IP attorney or agents for this. A subject matter expert can help you plan a strategy as they have knowledge about patent laws, rules, regulations, and technical knowledge related to the invention. These attorneys or agents can also help you to perfectly draft your patent application. USPTO has granted permission to these agents and attorneys to prepare and prosecute the patent application on their behalf. They hold the authority to manage things by way of power of attorney. Once they are appointed, USPTO can directly communicate with them about the procedure to obtain a patent rather than communicating with the parties.

Prepare patent application

After doing preliminary research, you can start preparing your patent application either by yourself or with the help of an appointed agent. Also, it is important to keep in mind that you can’t claim two different designs in a single claim. In easy words, if two distinct designs have no relationship with each other, they can’t be filed in a single application. Two separate applications have to be made for them. However, if the design is the modified version of the single claim, then it can be added to the same application. According to the guideline of USPTO, your design patent application should contain the following elements:

Preamble

The preamble is an introductory part of an application that provides essential information about the application. It particularly includes three key elements that are the name of the applicant, the title of the design, description of the article in which the design is imbibed.

Name

The preamble starts by mentioning the name of the individual or entity that is applying for the patent. This could be the name of an individual inventor or a company name or organization representing inventors.

Title

The title of the application has a specific purpose as it helps in identifying the article. You need to give the article a specific and accurate name that is commonly known and used by the general people. A title helps the patent examiner in conducting thorough research on prior art to find similar designs. It also helps in categorizing applications to their appropriate class as well as subclass. This helps the public to understand the nature and use of an article that incorporates the design, mainly after the patent goes public.

Description of the article

The preamble should also describe the nature of the article and the intent to use that article in which the design is imbibed. This helps to understand the overall purpose and function of the article. Also, it tells how the design contributes to the overall appearance and visual aesthetic feel of the product. It provides the overall background of the matter and gives a gist of the inventor’s intention for the patent application.

Cross-reference of related application (optional)

This is about providing information about any other related application or patent application that is connected to the current design. It is an optional element that is not necessary to be included if the related application information is already there in the datasheet. Whenever there is a related application such as a parent application or provisional application, it is important to include that information so that the examiners easily understand the connection between the two applications. This can consist of the application number, filing date, and other related information that helps in understanding the connection.

Statement for federally sponsored research and development (optional)

This is again an optional element that has to be included only if the design is a result of sponsored research and development by a federal agency. It helps in understanding whether the design is funded or supported by any federal agency that supports the creation of designs. As the USPTO tracks the record of every applicant, this disclosure of information will help them further accurately document the design and its development.

Description of the figures of drawings

This element in the patent application gives a detailed description of the visual representation of a product that you include in your application such as drawings and photographs. It provides a textual narrative to enhance the understanding of the design. It also indicates what view a drawing represents such as front view, top view perspective view. The description carefully and precisely explains the various features of the drawings such as their shape, proportion, patterns in it, etc.

Along with the descriptions of the drawings, the design patent application also contains the following statements:

Description of unillustrated portion

This description provides an explanation about the portion of the design that is not illustrated in the drawing. Suppose you only include the left portion of the drawing and the design of it from the right view is identical; then this has to be written clearly to give a better understanding of the overall design.

Description of Non-claimed portion

This description provides an understanding of a part of the design that is not included in the claim. It is the excluded part of the design that doesn’t contribute to the claimed design and is not a part of patent protection.

Clarification of Broken-line illustration

This provides clarification on the broken line used in the drawing or illustration. Broken lines in a design represent the environmental or contextual texture; these lines do not contribute to the design and are not a part of the claimed patent. It differentiates the actual design element and environmental features used as broken lines.

Description of Nature and Environmental Use

This description includes the description of the nature and environmental use of a design that helps to understand the context and purpose of the design more comprehensively. It has to be included here if it is not described in the preamble. If the preamble already has the description, then this can be skipped from here.

Feature description

This description in a design patent application is where the inventor has to describe the different or distinctive features of the design. This description highlights the unique elements of the designs, their configuration, arrangements, or patterns that set the design apart from existing designs or prior art. This will be the detailed comparison that the inventor has to do, in order to understand the difference between his design and the already existing design. It can include shape, color, texture, lines, or any other ornamental feature that helps in enhancing the visual appearance of the product. This detailed feature description should be in clear and concise words, through which the inventor will be able to communicate his thoughts to the examiner.

A single claim

A design patent application allows only one claim, unlike a utility patent where multiple claims are allowed. This claim defines the design that the applicant is looking forward to being patented. The claim should describe the ornamental design for the article in which the design is imbibed in technical terms. This is a concise statement about the subject matter of the application. The claim should be consistent in using the terminology with the title of the invention that accurately describes the design throughout the application. This helps in avoiding any ambiguity for the examiner. If by any chance the specification includes the special description of the design, modified form of design, or other descriptive matter, the word “as described” has to be added to the claim after “as shown”. The line should be read something like this, “the ornamental design (for which the article in which the design is imbibed) as shown and described. While writing the single claim, it is important to keep in mind that the claim should be broad enough to cover all embodiments of the design and at the same time be narrow enough to differentiate it from existing design or prior art.

Drawings and photographs

Drawing or photographic representation is the most essential element of a design patent application. This conveys the visual aspect of a design such as its shape, configuration, surface pattern, ornamentation, etc. These drawings and photographs are carefully prepared that showcase different views of the products. It includes photographs of designs from various angles such as its front, back, top or bottom view. These drawings and photographs are well labeled for the examiner to understand each feature of the product easily.

Black and white photographs or drawings

In every design patent application, it is important to include black and white photographs or drawings of the claimed design. This drawing and photograph is the visual representation of the design in a clear manner that leaves no room for other representations or uncertainty about the design. Drawings can be done with black ink on white paper, whereas black and white photography is an alternative to it that can also be used. The drawings and photographs should comply with the requirements given in Provision 35 USC 112. It says that the drawings and photographs should include enough views of a product design that fully disclose the appearance of the product. Along with this, there are some other requirements given under 37 CFR 1.84 and 1.152 that you also need to comply with. It is also important to keep in mind that you cannot use a combination of both photography and drawing. This could add ambiguity to the designs. To avoid this, it is advisable to pick one among these that could fit you. The patent application will only get accepted if the guidelines given by USPTO are followed; otherwise, it leads to rejection.

Colored drawings and photographs

You can use colored drawings and photographs in your design patent application to represent your designs only when you state a reason for the necessity of using the color. If you are including colored drawings only for the representation purpose and they are informal, then you need to mention this specifically stating that “Colours shown in the claimed design form no part thereof”. Color will be considered an integral part of the claimed patent design unless the disclaimer is provided separately in the application. Just like Black and white photography or drawings, USPTO has also laid down some guidelines for colored photographs in 37 CFR 1.84. These also need to be checked before attaching color photographs to your application; otherwise, there is a high chance of your application being rejected.

The views

The photographs and drawings you’ll be including in your patent application should include a sufficient number of views that helps to understand the overall appearance of the claimed design. That includes all views of a product such as front, bottom, top and back views. It is also recommended to include the perspective view in a three-dimensional way that clearly shows how the product will appear in general. You also need to mention specifically if both the views of your products are similar, like “the left view is identical to the right view as shown in the image”. If the bottom view of your product is flat or doesn’t include any ornamental design then this also should be mentioned clearly. The word “unornamental” should only be used for a flat surface that has no decorative or design element in it. Similarly, if a certain side of the product is not visible during the use, then it can be omitted from here. However, if that part is supposed in explaining the claimed design, it should be there in the application.

Surface shading

Drawings in a design patent application should include appropriate surface shading to clearly depict the character and contour of all surfaces, particularly from the three-dimensional aspect of your design. This is important as it differentiates between the open and solid areas of the designs. Usage of solid black color is not allowed generally unless it represents the color black or is used for the contrast color. It is important to provide accurate and appropriate surface shading as lacking it can create an unclear design. Adding surface shading after submission of the application is not permissible and will be considered rejected. It is also important to comply with the rules and regulations given by USPTO in order to get a grant for a patent application.

Broken Lines

Broken lines in a patent application are just for illustrative purposes and it does not form a part of the design claimed. They are used to describe the part of the environment in which the design will be used. These are the portions of articles that are not considered as part of claimed designs. While using broken lines, you should be careful that it should not overlap or interfere with the claimed design. They should also be in less opacity than the lines used to illustrate the claimed design. By using the broken lines, you can conveniently show the difference between the claimed design and the environmental surface.

Execute oath or declaration

The final step for a design patent application is the execution of an oath or declaration. It is a legal declaration that an inventor has to sign in order to confirm the truthfulness of certain statements. It is the acknowledgment of legal implications after submitting patent applications. There are certain requirements for oath and declaration given by USPTO in provision 35 USC 1.63 that needs to be followed. Also, this oath and declaration must be properly witnessed and notarized as per the rules and regulations of USPTO.

File the application

After completing the preparation of the design patent application the next step is to file the application in the patent office. This includes filing necessary forms, providing necessary documents, and paying associated fees. The elements of the patent application should contain information in the following order mentioned below. This is also prescribed under 37 CFR 1.154. You can also use the form link to download the form.

Design patent application transmittal form: This form is used to provide essential required information about the patent application, such as the title of the design, name of the applicant, address of the applicant, filing fee payment details, or others. It is a cover sheet that accompanies application material. Download the form link from here.
Fee transmittal form: In order to get the patent you need to pay a certain amount of fee prescribed by USPTO. The authority has levied an appropriate fee structure for everyone that needs to be paid in order to obtain the patent. These fees are for appropriate filing, patent search, and examination fees. You can check the authentic fee structure from here. This fee structure can vary depending upon the inventor if it is an individual or medium, small, or large entity. The form requires you to pay the filing fee as well as you need to specify the types of applications, number of claims, or any additional fee if required. You can download the form from here.
Application Data Sheet: This data sheet contains comprehensive information about the application, that includes the inventor’s details, the applicant’s details, and any other application or prior art details. It is a summary of key important information that needs to be kept in mind while the examination process. Check here to know more details.
Specification: A specification is a written document that specifies the details of the design in written form. It includes a detailed description of the design, featured design, and special elements as discussed earlier in the design patent application. You need to attach the same prepared documents here.
Drawings and Photographs: Include the drawings and photographs you prepared earlier with proper labels.
Inventor’s Oath or declaration: Attach the oath or declaration you prepared earlier as discussed above.

After receiving the application, USPTO assigns a separate application number and filing date to each individual. A unique “filing receipt” is generated by the patent office and delivered to the inventors so that they can keep track of their application status. Further, the application has been sent to the examiner for the examination process as per the date of the application.

Examination process

During the examination process the United States Patent and Trademark Office (USPTO) reviews the application for compliance with formalities and does thorough research on the design claimed along with its comparison to the prior art or existing designs. The examiner begins by checking all the formalities that need to be fulfilled. It ensures that the applicant has to follow all the rules, regulations and adhere to the guidelines of USPTO while submitting the application. If there is anything missing in that, then the examiner sends the application for correction. During the examination process, if the examiner finds that the claimed design already exists or it matches with the prior art then it rejects the application immediately. This rejection is communicated to the applicant through office action. A detail is issued to the application that provides the reason and ground for rejection of such application along with appropriate modifications and recommendations to avoid this rejection.

Response to office action

After receiving an office action it is important that you should respond to it within an appropriate time. The receipt you have received in office action generally mentions the time frame to reply as a “reply by” date. Typically it is set for six months, it can be more depending on the receipt you have received and also the availability of the office. You can submit the response after making the necessary prescribed amendments. It is important that you should reply to each objection raised and address the issue. You can further request the office to reconsider your application while presenting your arguments on the point of objection raised.

In every communication with the office, you particularly need to mention the following undermentioned things:

Application Number
Group Art Unit Number
Filing date
Name of the examiner who prepared recent office action
Title of the invention

You also need to attach a “certificate of mailing” prescribing that you have made the response within the given timeline. This timeline will appear on the front page of the receipt mailed by the office action. The certificate was sent by the USPTO to identify that the response is sent before the expiration of the fixed time period.

If for any reason you will not be able to respond within the given time frame, then you can request for extension along with the reason for such delay. You need to pay some required fees also, in order to get the extension of time from the patent office.

To ensure receipt confirmation of filed documents, applicants can include stamped self-addressed postcards with their replies. This postcard will be stamped with the date of receipt by USPTO and returned to the applicant which serves as evidence of timely receipt. If you plan to change your mailing address during the application process it is important to notify USPTO in writing about the same. It is also important to include the correct mailing address for further communication. Failing that can lead to miscommunication between you and the patent office. Here’s a suggested format for “certificate of mailing”:

[I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia, 22313- 1450, on (Date of mail)”

Name:

Signature:

Date: ]

Allowance and grant

After receiving the applicant’s response the examiner carefully examines the application again to check if the criteria are being met or not. If the examiner is satisfied that the application has met the guidelines of USPTO a “Notice of Allowance” shall be issued to the applicant. This final allowance will be granted once the necessary fee is paid by the applicant within the prescribed time frame. If the applicant failed to do so, the application will be discarded by the Patent Office. The prescribed time to pay the fee is generally within 3 months from the date of receiving the notice. Once the fees are paid, the patent will be granted to the applicant. A letter will be issued by USPTO to the applicant indicating that he has been granted the patent for the so-and-so design that he applied for. The letter will include the details about the applicant’s name, title, date of grant, patent number, etc. Once the patent is granted the applicant becomes the exclusive owner of the patent and enjoy the rights granted to him with respect to that patent.

Reconsideration

In certain situations, even after receiving notice of allowance, the applicant wants to submit the application for reconsideration on certain aspects of design. This could include addressing any remaining issue that is raised by the examiner. In order to do so, the examiner has to file a Request for Continued Examination (RCE) along with the prescribed fee and specified time frame.

Also, after a careful examination of the response to the office’s action, the examiner can either grant the application or further reject it. The examiner can make the rejection “final” upon its decision. If the applicant is not satisfied with this they can further appeal to the Patent Trial and Appeal Board (PTAB). Applicants can also file a new application and take the benefit of an earlier filing date to keep the claim continued.

Design patent infringement

Design patent infringement happens when someone unauthorisedly manufactures, uses, sells or imports a design that is similar to the design already patented by someone else. The person who infringes the right of another patent owner hasn’t obtained prior permission to use, manufacture, sell, or import that design. When such infringements happen, the rights of the original patent holder get violated and therefore legal actions can be taken to enforce those rights. If you are already a patent holder and someone has copied your design, the following statutes are there for you to seek damages.

Design patent infringement provisions

35 USC 271. Infringement of design patent

This provision explains the actions that constitute a design patent infringement. Provisions of section 35 USC 271 are carefully examined to determine whether a patent holder’s rights have been infringed or not.

It says that anyone who make, use, offer to sell, or sell an invention of another patent holder, without authority or permission, within the state of the United States or import into the state of the United States during the term of that patent invention is said to be a patent infringer.

Anyone who imports a product or invention into the state of the US and such product invention is already protected with a design patent without the authority of using it, will also be considered a design patent infringer. This provision will also include products manufactured abroad and brought to the US for sale.

If anyone in the US sells, offers to sell, or import a component of the manufactured machine, manufacture, combination, or composition or material or apparatus used in practicing a patented process, knowing that it is specifically made for infringing the patent, they will also be held liable as a contributory infringer. In simple words, if someone knowingly supplies or deals with parts or material designed especially for infringing a patent, that person will have to share equal liability with that infringer.

35 USC 289. Additional remedies for infringement of design patent

This provision grants the patent holder the right to claim specific remedies in case of their design patent infringement. This remedy allows the patent holder to take additional damages from the infringer for using its design.

According to the provision of 35 USC 289, if there is an infringement of a patent then the patent holder is liable to receive the amount of total profit derived by the infringer from the sale of such articles of manufacture. The damages awarded to the patent holder will be calculated based on the total earned profit. To get the benefits of receiving damages, the patent holder has to prove that the infringer has actual knowledge about the patented design. However, knowledge is not a must, the infringer still has to pay the damages, if he is negligent to know about the design.

Just like a utility patent that calculates damages including reasonable royalty or actual damage, this provision also calculates the special damages in case of design patent infringement. This provision is to help design patent owners to seek respect and protection for their designs. This amount can be recovered in any court in the United States.

Tests that determine design patent infringement

Ordinary Observer Test

The ordinary observer test is a test to determine a design patent infringement. In this test visual appearance of a patent, design is carefully examined and compared with the design of the accused infringer. This test questions whether the accused design is similar to the observer design when viewed by an ordinary observer. If the ordinary observer found the designs to be similar then the infringement of the design patent is confirmed. Here, an ordinary observer is a person familiar with the prior art and who is viewing the designs with an objective eye. The knowledge and experience of the observer are irrelevant in this test.

Three-Way Visual Comparison Test

A three-way visual comparison test is another way to determine patent infringement. This test uses three different visuals simultaneously to determine if a product infringes a patent design or not. The three different images are put side by side at the time of comparison. They are patented design, accused design, and prior art. The test is based on the idea that an ordinary observer can be able to locate the similarities and differences among all the images clearly. This test is a more specific approach to determining designs patent infringement as it involves structured comparison.

Steps involved in determining three-way visual comparison test

The first step involved in identifying the patent design, accused design, and prior art design that existed before the invention.
Display all three design images side by side for the ordinary observer to locate the differences and similarities among them.
The ordinary observer will carefully examine and come up with a conclusion if the accused design is more similar to the patented design or prior art.
Based on the observer’s conclusion if the accused design is more similar to the patented design, then it is said that the patent is infringed.

Four-Factor Test

The four-factor test is laid down in the famous case of the United States i.e., Apple v. Samsung. These factors are used to determine the scope of the design patent of a product. This test helps in analyzing the overall difference in the design of a product. The four factors to be considered while examining an “article of manufacture” are:-

The Scope of the design

This factor looks into the specific elements and features of a design. This can be done by carefully examining the written description and drawing of the patented designs. The more similarities in the features of a design patent claimed, the more likely it is to be the design infringed.

Relative Prominence

This factor looks into how prominent the design is within the product as a whole. The visual significance of the patent design is compared to the other elements of the product. The vision is to assess the design’s visual impact and whether it stands out as a distinctive feature or not. If the design is relatively minor, then patent infringement is less likely to be found in the product.

Conceptual difference

This factor examines whether the design is conceptually different from the product as a whole or not. In this factor, we evaluate the design as a standalone feature that can also be identified separately from the functional aspect of the product. Here, if the concept of the design is different from the product then it is less likely to be said that the patent has been infringed.

Physical Relationship

This factor examines the physical relationship between the design and the rest of the product. It carefully determines how the design is integrated and how it is interacting with other components of the product. If the design is somehow imbibed in such a way that it cannot be physically separable from the product, it is more likely to be said that the patent has been infringed.

Design patent cease and deceit letter

If someone has violated your right by copying your design then you should start by sending them a cease and deceit letter. Cease and deceit letter is the first step involved in notifying the infringer about your design patent infringement. You can draft the letter yourself with the required details or can also take the help of the IP Attorney. This letter will notify the infringer about your knowledge of their activity. This also helps in solving the matter outside court which can be a cost-effective thing. The cease and deceit letter must contain the following information:

Sender’s and receiver’s Information: A sender’s information is a must for a cease and deceit letter. It should clearly identify the sender’s name, address, and contact details. This will help the receiver to reach back to you properly. It should also contain the details about the receiving party and to whom are you writing to. Mention the infringer’s name, address, and contact details as well.
Description of Intellectual Property: Explain briefly about your intellectual property that has been infringed. Provide accurate information about the infringed design and its registration information. You can also include the patent number, title, and the specific design feature that has been protected with your patent.
Allegation of infringement: Mention the reason why you believe that the receiver has infringed the patented design.Description of the infringer’s activities that constitutes infringement. Highlight the key similarities between the patented design and the infringer’s design, also the elements that constitute infringement.
Evidence in support: Add necessary evidence that supports the allegation of infringement. Pieces of evidence can include written descriptions, detailed comparisons, side-by-side visual representations of designs, photographs demonstrating the object being sold online, or any other supporting document that indicates similarities between the patented design and the infringer’s design.
Demand to cease infringing activity: Clearly state the demand to immediately cease activities that promote infringing activity upon the patented design. You can also mention the actions that need to be stopped in order to cease the activity. These actions can be production, sales, manufacturing, distribution, promotion, or any other.
Compliance Timeframe: Mention a compliance time. A reasonable timeframe with a deadline to respond and take action against it is required. This will give the infringer appropriate time to understand the situation and take necessary action to save them from paying damages.
Legal Consequences: Explain the possible legal consequences if the infringer continues to use the design. You can also request monetary compensation from the infringer. This can settle the past legal claims you have with the infringer and allow them to further utilize your design with a royalty payment. In case the infringer does not want to settle the dispute you can further intimidate them with legal suit and potential damage of reputation. State that the sender has rights and available remedies as per the applicable patent laws of the USA.

Famous design patent infringement cases in the US

Apple Inc. v. Samsung Electronics Co. (2018)

This is a high-profile legal battle in the US between two renowned companies, Apple and Samsung. This case of Apple v. Samsung, had a high impact on the technology industry as it highlighted the need and importance of design patents in the technology industry. In April 2011, Apple accused Samsung of infringement of its design patent related to its various iPhone models. Along with design patents Apple also accused Samsung of other infringements, such as trade dress and utility patents for smartphones and tablets as well.

In 2012, the District Court of California awarded $1.049 billion in damages in favor of Apple for wilful infringement of its design and utility patent and also trade dress. However, the case continued with subsequent appeals and retrials. The jury upheld the verdict of the lower court on the design patent but reversed the verdict on the utility patent. The case moved to the Supreme Court, where the court rejected the ruling and returned the case to the lower court, stating that Samsung need not pay the entire profits of the device. The damages should be based on a portion of the profit as the infringed patent is only a small part of the device and not the entire device. In 2018, the case was finally settled as Samsung agreed to pay Apple $539 million dollars for copying features of its original iPhone.

Crocs Inc. v. International Trade Commission (2010)

This was another case of the popular footwear company Crocs. In 2006, the company Crocs filed a case in the International Trade Commission (ITC) against several companies based out of the US for infringement of its plastic clog footwear design. The allegations were that several companies in the US were importing and selling shoes that were similar to clog-design shoes.

The International Trade Commission (ITC) is a federal agency that has the power to restrict the importation of goods that infringes the rights of another patent holder in the United States of America. Here, crocs company requested a cease and desist letter to restrict other companies from importing and selling its design. Crocs shoes include unique design elements such as a strap at the back and web structure like round holes in the upper portion of the shoes. After examination of the patented designs and accused designs ITC found that there is no infringement of Crocs shoe designs by its competitor’s product shoes. Aggrieved from this, crocs appealed in the US court for the federal circuit.

The Federal Circuit reversed the judgment of ITC and found the competing shoes to be infringing on the design of Crocs shoes. The court found the competitor’s shoes to be “virtually identical” to the design of Crocs shoes. The court further issued an order prohibiting other competitor companies to use the patented design.

Gorham Co. v. White (1871)

This is a landmark case of Gorham Co. v. White related to design patents in the United States. After this case, the design patent laws enforcement and interpretation have been changed. This case established the “ordinary observer” test for design patent infringement which was discussed earlier. The case revolves around the Gorham company which is involved in the manufacturing of decorative silverware items. They patented their innovative silverware patterns with the name of “Gorham patterns”. These patterns carry unique features and unique ornamental designs. Gorham filed a legal suit against its competitor company White as the company was using similar patterns in its product.

When the case stepped into the Supreme Court, the primary question was how the court will determine if the design has been infringed or not. The court laid down the “ordinary observer” test as a standard to determine the design patent infringement cases. This test was based on the visual appearance of the accused design and patented design when observed by an ordinary observer. If the ordinary observer sees those designs to be the same or identical, then it is said that the design patent has been infringed. This test continues to become an integral part when determining any design patent infringement case to date.

Polaroid Corporation v. Eastman Kodak Co. (1986)

This was another landmark case for design patent infringement in the USA. This case of Polaroid v. Eastman revolves around Polaroid Corporation, a renowned instant camera and film company, and Kodak, a player in the photography industry. The company patented its design of instant photography cameras and film. Polaroid sues Kodak Co. for selling instant cameras and films similar to it. It is found that Kodak’s camera has similarities to Polaroid designs including overall experience, mechanisms, and features of the products.

After several analyses and legal proceedings federal district court announced that Kodak’s design was “substantially the same” as the design of Polaroid and hence it has infringed the company’s design. The court issued an instant injunction that prohibits the production and sale of infringed designs. Though the legal battle continued as Kodak appealed this decision in another court. The appeal court reversed the order of the district court stating the design was invalid, due to obviousness.

The case finally moved to the Supreme Court where the court held that both the designs are “substantially the same” and ordinary observers would examine both the products as same. The court highlights that the “ordinary observer” test is the primary method to determine whether a design patent has been infringed or not. The court awarded Polaroid damages of $909 million for its design patent infringement. The huge amount made this case the largest awarded patent damage case of that time.

Egyptian Goddess Inc. v. Swisa Inc. (2008)

In this case, the United States Court stated that the “point of novelty” test should no longer be used in determining patent infringement cases rather the court should use the “ordinary observer” test. The case of Egyptian Goddess v. Swisa revolves around the Egyptian Goddess company which was famous for manufacturing nail shapers. The company has already patented the unique ornamental design of its product nail shaper. The company filed a lawsuit against another competitor company alleging infringement of its design of nail buffers. The nail buffer has a square cross-section and buffer surface on three sides of its four sides which was similar to the accused design also.

The district court granted the accused motion for summary judgment, on the ground that it passed the “point of novelty” test. It says that the “point of novelty” test distinguishes between the accused design and prior art and if a difference is seen, then there is no design patent infringement. Here, there is a minor difference between the features of product design and prior art.

The company Egyptian Goddess appealed against the order of the district court to the federal circuit. The federal circuit further stated that the “point of novelty” test is not enough to determine the design patent infringement case. It says that the test is pointless as it only considers the difference between patented design and prior art. The court further observed that this test does not fulfill the purpose of a design patent which is to protect the ornamental features of a product and not only its functional features. The court found Swisa guilty in this case of infringement of the design of the Egyptian Goddess. After this case, the “point of novelty” test is no longer used in determining design patent infringement cases.

Conclusion

Lastly, it is important to protect the unique ornamental design of your product if you are an inventor, business owner, manufacturer, or someone who wants their design to be protected. As it can protect your competitors from copying your product design and also helps to earn a royalty on it, it can be a helpful tool for businesses. Understanding its advantages and obtaining one for yourself, can surely be a smart move. We have also seen above how famous brands have conflicts over designs and due to which someone has gained a huge profit on the other had someone lose a huge amount in the business. You can surely understand the importance of design patents by understanding iconic brand strategies such as Apple, Nike, Louis Vuitton, Coca-cola, etc.

As per the USPTO patent statistics, there is a decrease in the number of patented applications in the year 2021 by 4%. In 2021, the total no. of issued design patents by the USPTO was 34,288. The design patent includes many different types of electronic devices, smartphones, tablets, computers, and earphones. The decrease can be a subsequent response due to covid. Though the number of applications has increased in past decades as more and more are knowing the importance of design patents.

Make sure you check the criteria and requirements for obtaining a design patent. These criteria and requirements are given by the United States Patent and Trademark Office (USPTO) which every person who is obtaining a design patent has to comply with. The application process to obtain a design patent is simple, but at the same time, it is important to file it correctly so that you get your patent granted by the authority. After obtaining a patent you can enjoy your rights for the next 15 years without any hindrance. If you have also a unique and distinctive design then obtain a design patent today and take your business to new heights.

Frequently Asked Questions on Design Patents (FAQs)

What is a design patent?

A design patent is a type of intellectual property right granted to protect the visual or ornamental appearance of a product. This patent protects the overall visual appearance of an article of manufacture which includes shape, pattern, unique appearance, or combination of elements of a product.

What can we protect with a design patent?

A design patent can protect the visual characters of a product. It includes protection of various items like the overall appearance of furniture, shape of a product, patterns of clothing, unique product packaging, graphic user interface (GUI), and others. Every design that is appealing to the eyes can be protected.

How long does a design patent last?

A design patent lasts up to 15 years from the date of grant of such patent. Till 15 years, the patent holder has the right on its invention that prohibits anyone else from making, selling, using, or manufacturing of products of similar or same design.

How much does it cost to apply for a design patent?

The cost for the application of a design patent can vary depending on various factors such as the size of the entity and the total number of claims made in the application. You have to take care of the expenses such as USPTO filing fee, Attorney fee, examination fee, patent search fee, Professional Drawing and illustrator fee, and maintenance fee. The filing fee for a basic entity is somewhat around $ 380 and the large entity is $ 760. The filing fee of a design patent is lesser than a utility patent.

Is a design patent different from a utility patent?

Yes, a design patent is different from a utility patent of a product. A design patent protects the overall visual appearance of a product on the other hand utility patent protects the functional aspect of a product. Along with this, the filing fee of a design patent is also less than the utility patent.

How can we obtain a design patent in the US?

You can obtain a design patent in the US by filing an application to the United States Patent and Trademark Office (USPTO). If your application met the requirements as per USPTO, then the patent will be granted to you. There’s also a filing fee that you need to pay, in order to get the patent.

Can I license and sell my designs with a design patent?

Yes, as an owner of the design patent invention, you have the authority to license or sell your design. This will allow you to get a certain amount of royalty in exchange for the use of your design patent. By this, you can generate revenue for your business without giving up the ownership of your designs.

Can I obtain both a design patent and a utility patent for the same invention?

Yes, you can obtain both a design patent and a utility patent for the same invention subject to certain situations and conditions. If the product has a unique ornamental design as well as a novel functionality aspect it can obtain both utility and design patents. For example, you can get a utility patent for how a particular feature of the smartphone works and a design patent for how the feature looks. But the scope of protection of both protections will vary depending on the type of protection.