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Understanding the Nitty-Gritty of Design Patent Application

The importance of design patent in application for an article could be understood with the legal battle between Samsung Electronics co Ltd and Apple Inc that lasted for around 7 years until the court ordered a resounding legal victory to Apple in its bitter patent war with Samsung, ordering the South Korean tech giant to pay more than $1 billion in damages for “willfully” copying the iPhone and iPad design.

If you are not someone who keep on watching what is going on in the legal arena, still, You must remember the curvy design of a Coca-Cola bottle, or Statue of liberty or design of your computer mouse, all these were famous examples of design patents those were granted by the United States Patent Office to their respective owner(s). Simply by analyzing the market recognition the Coca-Cola bottle design has gained throughout these years you must have realized the importance of patenting designs.

Viewing the importance of design patents we decided to come-up with a write-up that could help stakeholders understand what design patents are and how it is protected.

What are design patents?

A design patent is a form of legal protection conferred to aesthetic appearance of an object or an article of manufacture. Simply put, rather than protecting the functionality or utility of an invention it is intended to protect the ornamental design or appearance of the article. In other words, if your product has a distinct configuration, distinct surface ornamentation or both, you can file design patent application to seek legal protection.

Design patents are generally granted to ornamental designs on jewelry, mobile hand-set, automobiles or furniture, as well as packaging, fonts and computer icons (such as emojis).

One important aspect of design patent is that a design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. Some important statues relating to filing design patent application in the United States are covered in:

  • 35 U.S.C. 171
  • 35 U.S.C. 172
  • 35 U.S.C. 173
  • 35 U.S.C. 102
  • 35 U.S.C. 103
  • 35 U.S.C. 112
  • 35 U.S.C. 132

Also read: Patent Drawings: How to Differentiate Between Industrial Designs and Patents

Requirements to meet before filing design patent application

Design patent is one of the handiest tools that can protect the human aesthetics; however, not all designs pass through the patent office like the USPTO. To be conferred with design patent protection your products/designs need to meet the below mentioned requirements:

  • Original to the inventor(s)
  • Should have some sort of aesthetics
  • Satisfy the ornamental standard
  • New with no identical design that exists in prior art
  • Nonobvious from existing design(s)
  • Must be visible to the user when the product is in use

Also read: Top 3 Design Patent Drawing Errors That Result in Office Actions

Difference between utility and design patents

Utility PatentsDesign Patents
Granted to functionalities of an inventionGranted to aesthetic appearance of an object
Lasts for 20 yearsLasts for 14 years
Can be renewedCan’t be renewed
Maintenance fee needs to be paidMaintenance fee is not required
Utility patents are expensive and difficult to obtainAre relatively less expensive and easier to obtain

Things to consider before filing design patent application

Step 1: Determine If Your Patent Is a Design Patent- Before going for a design patent we need to ensure if our design qualified to be granted design patent. Various criteria that determine the eligibility of a design patents are mentioned above. These criteria need to be fulfilled before filing design patent application.

Step 2: Search for Prior Art- Like utility patents here also we need to do a thorough prior art search that can help us understand if our design is a novel one and we are not simply reinventing the wheel.

Step 3: Make appealing Drawing- Unlike utility patents success of a design patent is determined much by the design or its aesthetic appearance; hence, it should be represented in a drawing that can help patent office understand how the design is different from the existing ones and whether it meets the requirements of being granted a design patent in the first place.

Step 4: Identify the class of Design- For the sake of convenience designs are categorized in separate classes.  An internationally accepted classification of Industrial Designs based upon the function of the article is required. The class and sub-class should be mentioned in the application. There are 32 classes and most of the classes are further divided into sub-classes.

Step 5: Mind the Locarno International Classification of Designs- The Locarno Classification is the international classification system for industrial designs that is administered by the World Intellectual Property Organization (WIPO) and no matter whether you are intending to find, search or locate such patents the Locarno Classification System needs to be kept in mind.

Step 6: Claim the Priority Date- If you intend to file your design patent through the convention route you can claim your priority date simply by citing your previous application. However, convention route is applicable only to those jurisdictions that are party to WIPO or other inter-governmental organizations.

Since, much of the success of a design patent application depends on the way it is drafted; it is prudent to seek the help of an expert. Someone (individual or company) that is equipped with the nitty-gritty of filing design patents. Patent Drafting Catalyst is one of such companies that have got wide experience in filing design patent applications in various jurisdictions for clients from various domains.

PatSketch, for best services

We, at PatSketch, believes that drafting design patent application is not just about meeting the basic regulatory requirements, it is also about creating value to your product through human aesthetics. Thus, the team is equipped with patent drawing experts who can support our esteemed clients from start to finish. A number of design patents, which were drafted by us, have been successfully granted or enforced against infringers, motivating us to serve our clients better.

No matter, whether you are intending to file a design patent application or trying to safeguard your existing design by enforcing your claims, our team can come-up with the solution that can help you assert your point. Visit our service page to know more.

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