Ornamental Design: Everything You Need to KnowPatent Law ResourcesDesign Patent
An ornamental design patent only protects the design of a manufactured object, unlike a utility patent which protects the function and operation of an item.8 min read
2. When Is an Ornamental Design Patent Helpful?
3. Why Is an Ornamental Design Patent Important?
4. Reasons to Consider Using an Ornamental Design Patent
5. Reasons to Consider Not Using an Ornamental Design Patent
6. Deadline to File for an Ornamental Design Patent
7. What Could Happen if You Don't Use an Ornamental Design Patent?
8. Frequently Asked Questions
9. Steps to File
10. Sample Forms
Updated July 13, 2020:
What Is an Ornamental Design Patent?
An ornamental design patent protects the design of a manufactured object. It is different from a utility patent. A utility patent protects the function and operation of an item. An ornamental design patent only covers the appearance of the product.
"Ornamental" in this case means the visual appearance of a product. This is further explained in the Manual of Patent Examination Procedure. It's defined as "the appearance presented by the article which creates an impression through the eye upon the mind of the observer."
It's important to note the differences between the two types of patents. Many inventors are confused by the options. It's sometimes hard to know which option to apply for. An ornamental design patent is granted for the design of an item. It does not include anything about the way the item works. This is beneficial if you come up with an improved design for a common item.
For example, the unique embossed pattern on a baby wipe might have an ornamental design patent. The baby wipe itself would not be covered under the design patent. Only the ornamental design on the product is protected by that patent.
You might also see this patent referred to as a design patent. That is the official name on the application through the United States Patent and Trademark Office (USPTO).
The design patent term is 15 years from the date of grant. It changed from 14 years to 15 years in 2015. It was the result of the United States becoming part of the Hague Agreement Concerning the International Deposit of Industrial Designs.
When Is an Ornamental Design Patent Helpful?
If you have a new, unique ornamental design for a manufactured item, you can apply for an ornamental design patent. The patent application requires submission of detailed drawings. You must follow the technical requirements for the drawings. The USPTO describes specifications in the design patent guide.
No identical design can exist in prior art. When you submit your application, the USPTO reviewers will search existing ornamental design patents. If they find anything similar, your application will likely be rejected.
You can save time and money by searching, but many ornamental design patents aren't published online. It's smart to work with a patent lawyer who can conduct a thorough search. He or she can also review your case. During the process, your attorney will also make sure your drawings meet the guidelines.
In the past, inventors often chose not to pursue design patents. But as the patent holders have won more cases, these patents have increased in popularity. A design patent is a good idea if you have a truly new ornamental design. It prevents others from making and selling items that are too similar.
Common Uses for an Ornamental Design Patent
Ornamental design patents exist across a variety of industries. They're most commonly found in furnishings, apparel, and technology.
Computer Technology and Ornamental Design Patents
One industry that has seen a dramatic increase in ornamental design patents is computer technology. Design patents can help protect innovative and unique designs for computer peripherals, software, and equipment. A few examples include the shape and design of an iMac computer, the shape of a CPU box, or the appearance of a specific type of modem. Using an ornamental design patent to protect computer software and hardware designs will prevent other companies from producing something that looks very similar.
The technology giant, Apple, also used ornamental design patents to protect all types of intellectual property, from the user interface used in iOS, its mobile operating system, to the look and feel of the iPhone.
Patent lawyers are becoming more familiar with applying for design patents on software programs, such as specific types and designs of icons.
Why Is an Ornamental Design Patent Important?
If you create a new ornamental design, you need to protect it from theft. An ornamental design patent prevents other companies or people from copying your design. If you find that someone is copying your design, you can take legal action. Without an ornamental design patent in place, you won't have any recourse.
You can also file for more than one ornamental design patent. This option is useful if your design has multiple facets.
There are three major categories for ornamental design patents:
- Shape and proportions, which includes the actual shape and size of the design. One example is the Apple iPhone.
- Surface ornamentation, which only covers the design used on an item of manufacture. An example of surface ornamentation is a watch that includes a unique, non-obvious design. The watch or its functionality wouldn't fall under design patent protection, but the design could.
- A combination of shape and proportions and surface ornamentation, which might include a brand new style of sneaker.
Even if the design falls into one of these categories, it must also meet certain requirements. One must be able to reproduce it, and the item must be definite and not the chance result of an existing method. These requirements get a bit confusing, but think of a laser light pattern that changes randomly. You wouldn't be able to qualify for a design patent on the light pattern, but you might qualify for one on the combined appearance of the light and the item on which the light reflects.
Surface ornamentation is not the only factor for a design patent; the design must be an integral part of the item and can't just exist on its own. This stipulation allows for other manufacturers and designers to use similar designs on other products.
But the design must be ornamental to qualify, because functionality of an item doesn't qualify for a design patent. If you're trying to protect the way something works, you would need to apply for a utility patent. An ornamental design is visible during normal use of the product or when displayed in a commercial setting. You can qualify for a design patent even if the design will be primarily hidden during normal use, such as for underwear, the lining of a suitcase, or the inner sole of a shoe.
Some products qualify for both utility and design patents, so it's important to consider whether this applies to your invention. However, there are restrictions that limit double-patenting the same item, so you'll need to meet the requirements for both patent applications. There could be an option for a third legal protection, a copyright, if your design falls under the "work of art" category, and you may want to consider applying for trademark protection as well, if it includes a logo, phrase, image, word, or other design. A trademark distinguishes a provider of goods or services for easy identification.
Reasons to Consider Using an Ornamental Design Patent
An ornamental design patent has a number of benefits. The application is cheaper than filing for a utility patent, and your case will be processed quite a bit faster. The average processing time for a utility patent is three years, while a design patent will take between one and two years. You can also protect the design elements of a product, which is ideal if you're not inventing a new item but just creating a new way to present it.
Reasons to Consider Not Using an Ornamental Design Patent
The main reason that an inventor doesn't file for an ornamental design patent is if the design is too similar to others. If this applies to you, be careful. The patent holder could sue you for design patent infringement. An ornamental design patent requires your design to include novel and original ornamental features.
In order to prove ornamental design patent infringement, the patent holder would have to prove two things:
- Ornamental features covered under the patent aren't visible in prior art and that the allegedly infringing product appropriates the protected design.
- If that design is found to be appropriated, those involved in the case would look at the differences and similarities between the two products to determine whether they are similar enough to confuse an ordinary observer.
If your manufactured product has working components, you'll need to file for a utility patent. The ornamental design patent only protects the look of the product. A utility patent extends to the function, movement, and construction.
Deadline to File for an Ornamental Design Patent
The deadline to file for this type of patent depends on when you release the design publicly. If you keep it under wraps, there is no timeline. Use caution, because, during this time, you're at risk of someone else coming up with a similar idea. If that happens and the person files a patent application, you'll lose the chance.
After releasing the design publicly, you have 12 months to file an ornamental design patent application. The review process can take up to three years. However, most design patent reviews don't take that long. If approved, the filing date is the start date of your patent. It will then last for 15 years.
What Could Happen if You Don't Use an Ornamental Design Patent?
If you don't file for an ornamental design patent, other companies can legally copy your design. You don't have any protection without a patent in place. If a bigger company uses your design, it will likely sell the product at a lower price. Your company could lose a lot of money and sales as a result.
You also run the risk of someone else applying for a patent on a similar design.
Frequently Asked Questions
- What is the difference between an ornamental design patent and a utility patent?
An ornamental design patent protects the overall look and design of an item. A utility patent is more extensive. Its protection extends to the function, construction, and operation of a product.
It's hard to know whether your invention qualifies for a design or utility patent. Consider whether you need to protect the way the product works or functions. If so, you'll need to file for a utility patent. The design patent strictly covers the ornamental and unique design.
- What is protected under an ornamental design patent?
An ornamental design patent only covers the design of an object of manufacture. The USPTO defines an object of manufacture as something made by human hands. A patent protects the way the design looks. If another designer makes something similar, the patent holder can sue.
Steps to File
1. Review the existing patents.
Design patents are harder to find through online databases. Not all of these patents are published. Working with a patent attorney makes this step easier. Patent attorneys have access to more records and can find existing patents.
2. Prepare your documentation.
Filing for an ornamental design patent requires very specific documentation. The biggest portion of the application is design patent drawings. You must follow the requirements. These include views of the front, rear, top, bottom, and both sides of the design. It's also helpful to include three-dimensional views. If your design has multiple components, include exploding views.
You can create the drawings yourself or hire a professional. If you choose to do them yourself, make sure to follow the guide. Submitting incorrect images may cause your application to be rejected.
3. Finally, wait for a decision.
The review process could take up to three years.
If your application gets rejected, you can file a continued prosecution application, which is similar to an appeal. It puts your application in front of a different reviewer at the USPTO.
Review an example of an ornamental patent design application before you submit yours.
An ornamental design patent is the best protection against duplication of your original design. It only covers the appearance of the item. The patent doesn't protect how your item works or is constructed. But in the right circumstances, an ornamental design patent is very useful in preventing duplication of your idea.
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