Provisional Design Patent: Everything You Need to Know
Getting a provisional design patent can be a great step in getting your invention off the ground. 10 min read
Provisional Design Patent
Getting a provisional design patent can be a great step in getting your invention off the ground. While not required, it can help you add additional protection to your product.
In the past, you could always determine who was serious about patents from those that are not by what type of patent application they were filing. Those who were directing their clients to get design patents found that they were easier to obtain over a utility patent. However, since it's easier to get, it does not provide the same level of protection. In fact, it was possible to catch scammers by checking which people or businesses were advising inventors to get design patents instead of utility patents. That way they had much less protection against having their invention stolen.
Copyright is another type of patent that is frequently overlooked. A copyright can be obtained fairly inexpensively as long as you complete the process yourself with no legal assistance. It will cost about $30 to do so. You will be granted protection over your intellectual property for many years, even over more than one generation. Unfortunately, it only provides weak protection for the owners of intellectual property. You are not afforded as many rights as with a utility patent.
One lesson many inventors have had to learn is that cheaper is not going to be better with regard to securing his or her ideas. The less the protection costs, the less useful they are going to be for you. However, the need for a design patent should not be overlooked, especially if your invention has a special look that you want to protect from competition.
Despite this, few inventors are seeking design patents. This is puzzling considering that big companies like automakers and shoe manufacturers are filing design patents on nearly everything they produce. If the big companies do it, why shouldn't small-time inventors do it as well? A design that is eligible for such protection includes its visual design, including anything decorative or ornamental, that will be added to an item to be manufactured.
You don't think you need a design patent? Considering Nike, one of the world's largest brands, utilizes design patents can easily demonstrate their importance. Nike will file design patents on all of their inventions to prevent competition from stealing their designs before they have made it into production. This is just one example of why you need to consider using a design patent, as well.
The thing to remember about design patents is that it is not going to protect the mechanical aspects of your invention. Rather, it is going to afford you rights on the look of your invention.
The design patent is going to relate to the configuration of your invention, whether or not it is unique in appearance, and the surface ornamentation. It will ultimately protect how your invention looks, but not how it works.
It's important to note that the design that is protected by a patent is only able to exist in combination with the item it's applied to. You can't protect a design unless it is part of an item, and the function of that item is not included in the protection.
Should I File a Design Patent, a Provisional Patent, or Both?
The first thing to consider which type of patent to file, or if you need to file both, is to understand what your invention is intended to do. If it is intended to provide a new functional feature that includes a new way of working, provisional patents are ideal in order to protect those functions. If your invention involves a new arrangement or ornamental design for an item, however, a design patent application may be the way to go.
If your invention is a new design of a product and how the items are arranged, design patents are an ideal option. Consider, however, that the way an invention works or functions may be dependent upon the arrangement of its unique features. In such cases, it is advisable to seek both types of patents. It is not unusual for a new invention to be covered by both utility or provisional patents and design patents, as well. If your invention's design also has a functional aspect, you may want to consider filing both a design patent and a utility patent.
To file for both types of patents, the following is the best way of going through the process:
- File a provisional application that is directed at the functional aspects of the invention, with illustrations and other explanations that describe the invention's design.
- Change the provisional application to a utility patent application. This will give you the opportunity to list improvements or changes you have made to your invention.
- After your product is being produced and sold, file a design patent. This will claim priority to your utility patent. You will be able to determine whether or not you can get broad patent protection on the utility application.
- If you are able to get broad claims on your patent, you may not need to get a design patent. If narrow claims are granted, you may want to move forward with a design patent.
- Filing a utility patent application gives you a priority date much sooner.
With a utility patent application in progress, the inventor will be able to find out whether or not broad patent protection on the utility protection, which is based on the aesthetic design, is possible. If so, they may not need to file a design patent at all.
Something you should know when considering getting a design patent is the fact that they are not as expensive to get or to litigate. Obtaining a design patent later on within the process of production will still demonstrate that you remain invested in your product. That is why getting a design patent can be very beneficial.
Since there is no claim analysis, it is much more cost efficient to litigate your design patent. During the litigation process, it is simpler to check two different products that are similar in nature as long as the claims have validity and have been infringed on. It only involves determining if the claims are valid and infringed upon, for which the court only needs to compare the two products.
Waiting to file a design patent during the entire process shows that you know precisely how you want your invention to appear once it is manufactured.
It is crucial to understand that only a design patent on a finished, manufactured product can limit your litigation costs should others replicate your product. Inventors can choose to apply for design patents on items that will definitely be manufactured since those are the inventions that are most likely to be copied by competitors. This saves money because there is less need to obtain design patents on every single design, including those which may never move past the design process.
There is a difference in the terms of both utility patents and design patents. It's advisable to file for a design patent later in the process because, at that point, the inventors will know exactly how the manufactured item will look and be arranged. Design patents have a term of 14 years from the date it was issued. A utility patent has a term of 20 years from filing. By waiting to file a design patent later on in the production cycle, you may have the ability to extend your patent protection.
What If the Inventor Does Not Own the Invention?
Typically, those who actually create the invention complete patent applications. However, there are some instances in which another entity will file the patent on behalf of the inventor. If the inventor works for a company and has come up with an invention for the use of that business, the company would be entitled to file the patent. This can also happen if the inventor decides to transfer the invention to another person. That means that the inventor has transferred all ownership rights of the invention to the person or entity that has filed the patent.
How Do I File a Provisional Application for Patent?
Once you are ready to file a provisional patent, you will need to complete either an electronic or paper application. You will be required to submit any additional information, such as illustrations of your invention that include dimensions, as well as follow additional United States Patent and Trademark Office (USPTO) rules.
The following are the description guidelines for a provisional application for a patent:
- The description can be informal in nature and not be in standardized form.
- Specific descriptions are recommended by the USPTO so that you are able to describe how to make and utilize your invention.
- Submitting a detailed description will simplify the process for the USPTO when you are ready to associate a nonprovisional patent application later in the process.
- If a provisional application for a patent does not meet the necessary requirements, a nonprovisional application may not receive priority attention.
- You should file your provisional application as soon as you can. It is crucial to do so, as the inventor who files first is considered the inventor of the product. Even if you came up with the idea and prototype first, you will not get the patent if someone else files before you.
- Filing your provisional application early allows you to get the earliest filing date.
- You have the option to file more than one provisional application for your patent. It can be combined into a nonprovisional application later in the process.
What Are the Description Guidelines for a Provisional Application for Patent?
When you are filing a provisional application for patent, you may combine them into one nonprovisional application. It must be combined within 12 months of any provisional application so that you can effectively utilize a certain filing date.
What Are the Guidelines for a Drawing to Be Included With a Provisional Application for Patent?
The following are the guidelines when submitting drawings with a provisional application for a patent:
- A drawing submitted with your application does not have to be formal or in a standardized form.
- Per the USPTO, you should submit drawings that are specific enough to thoroughly describe your invention, what it does, and how it works.
- By submitting drawings that are detailed simplifies the process. The USPTO will be able to easily associate your nonprovisional application for a patent once combining your provisional patent.
- If you have invented a product that will be utilized in a specific field, it is crucial that you make your illustrations clear enough that a professional in that field can reproduce your invention in order to practice using it.
- For drawings that do not meet this criterion, a corresponding nonprovisional application may not get a priority filing.
Patents are designed to keep others from infringing on the use of your invention. Although ideas cannot be patented, patents are the best way to protect all other types of intellectual property.
There are three exclusions from patent protection named by the United States Supreme Court:
- Laws of nature
- Abstract ideas
- Natural phenomena
In addition, there are other limits to patent protection. For instance, the Atomic Energy Act of 1954 prevents the patent of any product that is utilized only for atomic energy or nuclear material.
A utility patent covers new and useful inventions. This can include products, processes, and methodology used by business, computer algorithms, or improvements to current inventions.
A plant patent protects new varieties of plants. Design patents cover new and original designs for manufactured articles.
Provisional applications for patents are valid 12 months from the date it is filed. This period cannot be extended, so you must file a nonprovisional application for the patent during the 12-month period in order to gain the early filing of your provisional application for patent.
According to the USPTO, a patent will grant the owner of an invention “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”
Your rights as a patent owner will not guarantee you the right to make the invention until a thorough search has taken place. Someone could already own a patent on a feature or a part of your invention. You will not be allowed to proceed with the patented invention unless, or until, the other patent owner gives consent or if the patent expires.
This would prevent the other patent owner from getting an advantage on any improvements to his or her portion of your invention.
If there are no patents on file, you may then create and monopolize on your invention.
A design patent is only utilized to protect the illustration and design of your invention. It provides limited protection that makes it easier to get a patent in a field that is saturated. However, it can be difficult to enforce your rights with a design patent alone.
They are helpful when you contract with a manufacturer to help create your product. Design patents will prevent the manufacturer from infringing on your rights after the contract has concluded. For instance, if any molds or special tools are used to create your product, the manufacturer will not be allowed to legally use those items or your processes to create a similar product to yours.
Keep in mind that a design patent will not keep your competition from creating a product very similar to yours. However, they will not be allowed to make a direct copy of your design without the possibility of legal action.
A utility patent is much broader than a design patent. It will provide more protection than just the embodiment of your invention. Utility patents will provide you with protection of your overall conception. Generally, you should always seek a utility patent if you can do so.
Advantages of Provisional Patent Applications
A provisional patent application comes with some additional advantages. They have less legal requirements than a utility patent application. A provisional application is not issued as a patent. What they do is provide you with a period of time, typically 12 months, to file your utility patent for your invention.
You can use that year to determine if you wish to further invest in your invention. If you choose to move forward, you have time to plan a utility patent application. Provisional patent applications are not expensive to file, so it can make sense to file. It will provide you with the time you need to check out the market for your design.
You may conduct market research only to learn there is no demand for your product. The provisional patent will then save you from wasting additional time and money on something that may not be a good investment in the long term.
However, if you are certain you are going to move forward with a utility patent application, you may decide not to spend money on a provisional application. If you have already done your market research and have identified a need, it may be best to move forward with a utility patent while focusing on the production of your product.
Identifying the aspects of your invention that need to be protected is where help from an expert patent attorney can be valuable. That is where UpCounsel can help. If you need help with your provisional design patent, post your legal need on UpCounsel's marketplace. UpCounsel has only the best attorneys from the most prestigious law schools available to assist you.