By UpCounsel Contributor 

In the U.S., design patents are perhaps the most overlooked type of patent available, and that’s too bad because they are the least expensive and easiest patents to obtain. In fact, according to the United States Patent and Trademark Office’s published statistics, in 2015 design patent applications represented only about 6% of the total patent applications filed that year, while in that same year, design patent applications were significantly more likely to result in an issued patent than other types of patent applications.

What Do Design Patents Cover?

Design patents protect the ornamental appearance of an article of manufacture. This can include the configuration or shape of the product as well as its surface ornamentation. While a design patent does not protect the manner in which a product operates, often times all that is important to a client is that competitors do not make a product that looks confusingly similar, so obtaining a design patent can be highly valuable in staving off competitors who are looking to make a quick knock-off product. Filing a design patent application also allows the filer to mark their product as “patent pending” and later mark the product as “patented” when the patent application issues.

What Do I Need to File a Design Patent Application?

The most important element to the design patent application is the drawings. Many clients already have detailed drawings of their product. For those clients who do not already have suitable drawings, there are many qualified patent drafts-people out there who can put together fantastic drawings in short order for not too much money, so with a little effort, suitable drawings can be easily obtained.

The drawings should show the surface of the product from all pertinent sides. Drawings are generally made with black lines, but in certain cases, photographs are permitted.

Why Are Design Patents Less Expensive to Obtain?

Unlike utility patent applications, which require extensive write-ups, design patent applications mainly involve proper drawings and proper paperwork. This means that legal fees are significantly less expensive. Additionally, design patent applications have lower filing fees, lower issue fees and no maintenance fees (which are fees that the Patent Office periodically charges to keep issued utility patents in force).

When Is the Best Time to File a Design Patent Application?

Current U.S. patent law holds that the first person to file a patent application for the same design will be entitled to the patent, regardless of who came up with the invention first, so it is best to get the patent application filed before the product is introduced (either made available for sale or otherwise disclosed to the public). However, in some cases, action taken by the inventor may start the clock on a one-year window or a six-month window within which the patent application must be filed to avoid loss of rights.

Can I file a Design Patent Application and a Utility Patent Application for the Same Invention?

Yes! However, to prevent the first-filed application from being prior art against the second-filed application, and to prevent a statutory bar on filing, it is best to file both applications at the same time, or, if that is not possible, definitely within the six-month window.

Is This Really Everything I Need to Know about Design Patents?

There is always more to know and it can be difficult to apply this information to a particular invention and situation. An inventor considering filing a design patent application should discuss their matter with a qualified patent attorney who can help to determine whether filing a design patent application is the right step to take.

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About the author

UpCounsel Contributor

UpCounsel Contributor

UpCounsel was launched in 2012 with the vision of allowing businesses to move and grow faster by revolutionizing the way legal work gets done. With the world’s largest network of independent lawyers, combined with an automated backend platform, UpCounsel connects companies of all sizes with the right attorneys for their needs, quickly, easily, and cost-effectively. Whether it’s providing temporary overflow or gap coverage, a part-time specialist on retainer, or an entire freelance legal department, we streamline the attorney-client workflow and offer a 21st century legal experience. That’s why more than 10,000 businesses, from startups to Fortune 500, have trusted us with their legal needs.

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