Introducing...the design patent!
Alright, so maybe you already know everything there is to know about design patents. Maybe you are familiar with the term because of the Apple v. Samsung disputes that have been going on over the past several years. Maybe you just couldn't care less about my ramblings (Then why are you still reading?). Whatever the truth may be, it doesn't change the fact that design patents can be an incredibly valuable addition to your IP portfolio. Yet, they are alarmingly under-utilized (my opinion, of course).
I don't mean to complicate things by throwing a new concept at you like this. I know it is hard enough keeping intellectual property sorted in your head. People come to me saying they have a logo they want to patent or a book they want to trademark...which is...incorrect, but that is what I'm here for! Right now we are just going to focus on patents. Bear with me, and you will leave here with a better grip on what patents are and you'll have a new tool that you can use to protect your IP.
The Three Kinds of Patents...
Oh, yes. There are three types of patents - utility patents, design patents, and plant patents.
*Sigh* "You're killing me."
(I know this stuff feels like it should be read in a Ben Steinian monotone voice. Stay focused. I am doing this for you.)
1) Utility Patents - These are what most people think of when they hear the word "patent." Why? Because they are the most common type of patent, and it makes sense that they are the most common patent because they are the ones that protect useful things (i.e., things with "utility"). They protect what we think of mostly as being inventions. They give the holder of the patent the right to stop others from making, using, or selling whatever invention is covered by the patent.
2) Design Patents - Ah, the star of this post and also the neglected child in the patent family. Design patents don't care about what a thing does. Design patents only think about what a thing looks like (pretty shallow, I know). They protect the appearance or ornamentation of an object, not its use. This protection may seem insignificant in light of what a utility patent protects, so "who cares?" Right? Well, I'll get to that in a second.
3) Plant Patents - "Ugh, seriously, who cares?"
I'm not gonna fight you on this one. Plant patents are the third type of patents. They protect plants, as you might have guessed, and there is no need to elaborate for this particular post.
Brawn and Beauty:
The Relative Differences Between Utility and Design Patents
So, utility patents get all of the attention and we understand why. Most of the time what an invention does is more valuable that what it looks like. But consider these characteristics of design patents:
Utility patents can be sooo complicated. I'd like you to take a piece of paper and draw a line down the middle. On the left side I want you to take your pen or pencil and describe in great detail how your television works, including its components and the science involved. Now, on the right side I want you to write the words "Check out my drawing!" and then draw a picture of a television. This is the [slightly exaggerated] difference between drafting a utility patent (the left side) and a design patent (the right). Utility patents require great detail. Because design patents only protect the look of an object, they can be drafted with far fewer words. The emphasis is on the drawings included with the application. This makes design patents easier to draft, easier to understand, and easier to examine on the patent office's end.
Design patents are much less expensive than utility patents. The filing fees for design patents are much less, and there are not maintenance fees that are paid throughout the life of the patent (unlike utility patents). Also, because design patents are easier to draft than utility patents (see above), there are lots of savings to be had in attorneys' hourly fees.
To put things into perspective, even a simple utility patent can cost upwards of $10,000, and complex utility patents can cost multiples of this number.
Design patents cost, on average, $1,000-$3,000.
Because of its simplicity, the United States Patent and Trademark Office can often churn out your design patent in 12 months. Utility patents can take three to four years!
Did I just make utility patents look really awful by comparison??
Luckily, there is good news. You may be able to have your cake and eat it, too. In fact, eat it however you'd like because you don't necessarily have to choose between a design and a utility patent. It is possible to obtain one or the other or even both! Below are some strategies to help you figure the best way for you to make use of a design patent.
Strategy, or, "Why you should care."
Strategy #1. Protect Only the Design
Design patents are easier, faster, and cheaper. Perhaps your pockets aren't as deep as you would like (mine aren't either). Some protection is better than none, right?
More often, however, people file only design patents when utility patents aren't an option. Think about Nike for a second. Nike didn't invent the shoe and, therefore, Nike won't be getting a utility patent on an obvious variation of a shoe any time soon. It's been done. But, what Nike can do is protect the ornamentation on the shoes it puts on the shelves. This gives Nike 15 years of protection of the design and allows them to keep competitors from manufacturing shoes with a substantially similar design. Here is an example of one of Nike's design patents protecting the look of a midsole.
Strategy #2. Broaden Your Protection with a Design Patent
It is possible to incorporate design patents into your protection strategy. When design patents are used along with utility patents, it is possible for an inventor to achieve broader protection than with a utility patent alone. Having a utility patent is great in that no one can make something that does what is covered in your patent. That won't stop them from taking the design of your product and applying it to something else. This is where design patents come in. They broaden your protection and preserve the styling that you have chosen to incorporate into your invention.
Strategy #3. Extend Your Protection with a Design Patent
Now, let's say you invented the watch band (Yes, that's right, in this hypo no man or woman who every walked the Earth before you came along thought to strap a ticker to their wrist). Here is the problem, though. You invented the watch band years ago. You were granted a utility patent but seventeen years have passed since then and now there are only three years left for protection. What can you do? Start getting creative with the look of your bands and file, file, file for design patents. Your utility patent will expire and people will have the right to make and sell their own watch bands. But if you have design patents in place then you can extend the duration of your protection for at least a little while longer. Nobody can touch your style.
The takeaway here is that it's important to look at all angles while forming your protection strategy. Design patents have their limitations, but they come with plenty of advantages as well. Used alone, they provide a unique type of protection that falls outside of the scope of utility patents. Combined with utility patents, design patents allow you to maximize your patent protection in both breadth and length of time. Simple, inexpensive, and quick - design patents should not be overlooked.
Chat with one of our patent attorneys today.
About the Author:
David "Tyler" Bennett is an intellectual property attorney and a partner at