Design Patent Grace Period: Everything You Need to Know
The design patent grace period refers to the one-year period prior to the effective filing date. Disclosures made ahead that time won't be considered prior art.3 min read
The design patent grace period generally refers to the one-year period prior to the effective filing date. Disclosures that the inventor made before that time won't be considered prior art.
Design patents protect an article's ornamental appearance, which may include the article's configuration or shape, as well as its surface ornamentation.
Design patents are required to be the following:
Designs must be non-obvious, meaning that at the time of filing for a patent, they can't have been obvious to other designers. The product's appearance has to be ornamental. Unlike trade dress law, items submitted for design patents don't have to be functional.
Design patents closely resemble the rights afforded in jurisdictions under the following names:
- Industrial design
- Registered design
- Design model
Patent law statute governs design patents.
The U.S. Patent and Trademark Office (USPTO) conducts a full examination of design applications, including searching for and analyzing prior art. Design patents are required to satisfy many of the same requirements that utility patents must satisfy, including sufficient disclosure. In comparison to utility patents, which protect functional concepts and ideas, design patents protect a product's outward aesthetic appearance.
Preparing an Application for a Design Patent
To obtain a design patent, you'll start with filing a patent application with the USPTO. If you're the inventor, you may apply, or an assignee of the patent application can apply.
The application must typically include the following:
- One claim
- List of all inventors and their signed declaration
- Specification, or brief description of figures
U.S. law requires inventors to be named on the application. Design patent applications only have one claim, unlike applications for utility patents.
If the application has more than one inventive concept, the applicant must elect just one concept and cancel any others. Unelected concepts may be pursued in divisional applications. Applicants will have to file and prosecute those separately. Applicants who choose not to pursue all concepts may face certain legal consequences.
The focal point of the application process for design patents is the drawings. Legally, the application must have a sufficient number of views in order to have complete disclosure of the design's appearance.
This typically means that the application includes depictions of the following:
- Left side
- Right side
- Perspective views
Sometimes, applicants may have to include additional views to fully disclose the design.
When two views are mirror images, such as both side views, you only have to depict one view. In your specification, you can explain that the other view is the same, or a mirror image. For views that wouldn't be seen in ordinary use, like the bottom of a large object such as a car or refrigerator, applicants can omit these, as long as they include an appropriate explanation in the specification.
Applicants don't need to claim the entire article, but they must depict the whole article.
A claim's scope is primarily conveyed in the figures' lines and shading. Lines may be broken or solid. Solid lines show the claimed design, and broken lines usually are meant to define boundaries or show visible environmental structure.
Broken lines that are even in length, such as dashes, depict environmental structure related to the claimed design but don't form part of that design. Broken lines that are uneven, such as dash-dot lines, define boundaries that show where a boundary doesn't actually exist but make it understood that the design extends to the boundary.
Applicants should also include shading, which shows contours of shapes or the article's character. In U.S. applications, surface shading is usually more common. Some other countries either don't require shading or outright prohibit it in applications.
Patents, like trademarks and copyrights, provide important intellectual property protections for their owners. Applying for patents is a time-consuming, costly process. To make your filing run as smoothly as possible, it's important to follow all application rules.
You may also want to consult with an expert in the patent law field if you have any questions about how to apply for a design patent. Once you obtain IP protection, you have exclusive rights to your creation for a set period of time.
If you need help understanding the design patent grace period, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.