Key Takeaways

  • Design registration in the U.S. protects the ornamental design of manufactured items through design patents.
  • A design patent grants exclusive rights for up to 15 years with no renewal options.
  • The application process involves submitting detailed drawings, a written description, and a claim to the USPTO.
  • Hague System allows international applicants to file a single design application covering multiple countries, including the U.S.
  • The examination process is usually faster than utility patents but still requires uniqueness and non-obviousness.
  • Filing costs vary, with government fees starting at $530, while legal assistance can increase costs.
  • Enforcement of design patents is crucial, and legal actions may be necessary to prevent infringement.
  • UpCounsel’s marketplace connects you with experienced design patent attorneys for expert assistance.

Design registration in the USA refers to a design patent, as outlined in the United States Patent Act. This act protects the 'ornamental design' for an 'article of manufacture,' granting the right to sell and manufacture the design.

Design Patent Protection in the United States

A U.S. design patent currently lasts for up to 14 years. This patent cannot be renewed, and no maintenance filings or fees are required to maintain the 14 years of protection. The duration for design patents was extended to 15 years for patents granted after the U.S. implemented the Hague System in 2013 or 2014.

Priority can be claimed through the RCD (Registered Community Design) only if the U.S. design patent application is filed within six months of the RCD's filing date. The necessity to file a U.S. patent for design is different, so make sure to leave plenty of time to get the application for the design patent ready.

An application for a U.S. design patent needs to be filed six months after the Registered Community Design so that priority can be claimed on it. This varies from the 12-month priority deadline for applications for utility patents that are within the Paris Convention, or the Patent Cooperation Treaty's lengthened dates of priority.

A patent of U.S. design can only include one design, which is not like the RCD or European Registered Community Design. From time to time, small varieties of one design can be a part of the application for a U.S. patent of design. This usually includes talking and negotiating with the examiner of patents. The varieties might need to be taken off so the patent of design can be given out, since one design needs coverage by one patent of design.

Benefits of Design Patent Registration

Design patents provide numerous advantages to businesses and inventors, making them a critical aspect of intellectual property protection.

  • Exclusivity: Prevents competitors from using a substantially similar design.
  • Brand Differentiation: Protects the unique visual identity of a product.
  • Market Advantage: Enhances business value by increasing perceived innovation.
  • Legal Leverage: Provides a legal basis to sue infringers and seek damages.
  • International Protection: Through the Hague System, U.S. applicants can secure design protection in multiple countries.

Patents of Design

Patents of design within the U.S.:

  • Need to be filed in the inventor's name, which is the actual person or people who made up the design. This is unusual in a number of countries.
  • A document of assignment must be filed with the U.S. Trademark and Patent Office only if the inventor is a worker or transferred or licensed that design to a particular company.
  • The inventor(s) must be listed on the patent design application, not the company.

The inventor or inventors who created the design can file the application for patent design. An application for a design's patent can be filed by any inventor. This individual does not have to live in the United States or have an office or address in the United States.

The inventor can choose to work with a patent attorney who is registered in the United States that can represent inventors at the United States Trademark and Patent Office (USPTO). U.S. lawyers and foreign lawyers cannot communicate with the USPTO if they are not registered as patent attorneys. They can help by giving directions out to an attorney from the U.S. who is an authorized patent attorney.

Design Patent vs. Utility Patent

A design patent differs significantly from a utility patent, and understanding these distinctions helps determine the best protection for your invention.

Feature Design Patent Utility Patent
Purpose Protects the ornamental appearance of an object Protects functional aspects or innovations
Duration 15 years from the date of grant 20 years from the filing date (with maintenance fees)
Requirements Must be new, original, and non-obvious Must be novel, useful, and non-obvious
Scope Covers only visual characteristics, not function Covers function, structure, or method of operation
Examination Typically faster and has fewer rejections More complex, requiring extensive documentation

If a product has both a unique design and innovative function, applicants may file both types of patents for full protection.

Patent Design Fees

The USPTO charges fees from the government that have kept getting higher within the past few years. Currently, the government fee for filing a design patent is $530. This cost can be reduced by half if the applicant qualifies as a 'small entity' under the U.S. Patent Act.

A small entity means that you have under 300 employees working for you and you have no design or license to a company with over 500 employees. The fees to get help from a draftsman and attorney are around $1,500 - $3,000, depending on how complex the application is.

A patent for design is looked over by an examiner of patents from the U.S. Patent and Trademark Office. Designs must be similar to utility patent claims, in that they are unusual and not obvious. There are fewer refusals or Office actions for design patents. An Office action incurs additional fees, but many design patents are granted without significant obstacles.

Design Patent Application Process

The design patent application process involves several key steps to ensure protection under USPTO regulations:

  1. Prepare Drawings: High-quality illustrations showcasing all aspects of the design.
  2. Draft a Written Description: Explains the design’s unique aspects without claiming functionality.
  3. Submit the Application: Includes the drawings, description, and official claim.
  4. Examination by the USPTO: Review for originality and potential conflicts with existing patents.
  5. Office Actions and Revisions: If the USPTO raises objections, applicants may need to modify their application.
  6. Granting of the Patent: Once approved, the design is legally protected for 15 years.

To streamline the process, many applicants work with a patent attorney to ensure compliance and avoid unnecessary rejections.

International Design Protection and the Hague System

For those seeking global protection, the Hague System for International Design Registration simplifies filing in multiple jurisdictions, including the U.S.

  • One Application, Multiple Countries: File a single international application instead of separate national filings.
  • Cost-Effective: Reduces administrative fees associated with multiple applications.
  • U.S. Participation: The U.S. joined the Hague Agreement in 2015, allowing foreign applicants to include the U.S. in their international applications.

Companies with a global market presence benefit from Hague filings, ensuring seamless protection of their product designs worldwide.

Frequently Asked Questions

  1. What qualifies for design registration in the U.S.?
    A design must be new, original, and ornamental. It cannot be purely functional or an obvious variation of an existing design.
  2. How long does it take to get a design patent?
    The USPTO typically grants design patents within 12 to 18 months, depending on application complexity and examination backlog.
  3. Can I enforce my design patent if someone copies my product?
    Yes. Design patent holders can take legal action against infringers, seeking injunctions, damages, and royalties.
  4. Is it possible to file a design and utility patent for the same product?
    Yes. Many inventors file both a design patent (for the appearance) and a utility patent (for function) to maximize protection.
  5. How much does it cost to register a design in the U.S.?
    Filing fees start at $530, with additional costs for attorney assistance, draftsmen fees, and office actions, which can raise total expenses to $1,500 – $3,000.
     

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