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As explained by the US Patent & Trademark Office, a design patent protects the “… visual ornamental characteristics embodied in, or applied to, an article of manufacture.” More specifically, a design patent can protect:
In general, a design patent protects the way an manufactured article looks. This is distinct from a utility patent which protects the way an article is used and works. Note that by definition, a design patent must “attach” to a physical object (an article of manufacture). Thus, there can be no design patents for abstract things like processes and methods.
Obtaining a design patent is similar to obtaining a utility patent. Briefly, here are the steps needed to obtain a design patent:
Conduct a patent search — Like all patents, a patentable design must be novel and non-obvious. These are the two main requirements and, if a proposed design is NOT novel and non-obvious, then the Patent Office will not grant a patent. Novel means that the design has not already been patented or publicly disclosed (like published in a trade journal or at an industry conference or in prior art on file with the Patent Office or with foreign patent offices).
The main purpose of a patent search is to ensure that the design has not already been patented and has not already been disclosed in the prior art. An experienced patent attorney can help with the search process.
Make sure the design meets the legal requirements for patentability
As noted, the second legal requirement for patentability is non-obviousness. Non-obvious is legally complex, but, generally, a small change to a previously disclosed and/or patented design will not be sufficient. Examples might be merely changing the color or just making the design bigger. In legal terms, the change in the “new” design must be sufficiently different from the “old” design that “a person having ordinary skill” in the relevant field of endeavor would not find it obvious to make the change.
During the patent search, similar design patents should be discovered. An evaluation must then be made with respect to obviousness. Again, an experienced patent attorney can help with this analysis.
Begin preparing the patent claims, descriptions, and drawings
All patent applications must contain claims, descriptions, and drawings. But, given that design patents are about appearance or shape, the claims, descriptions and drawings are even more important. Indeed, the drawings will be key if there is no physical prototype of the design. Several drawings are recommended showing the three-dimensional aspects of the design from various angles and perspectives.
Prepare and file the application
Once the claims, descriptions, and drawings are ready, then the application can be prepared and filed. Again, it is essential to hire an experienced patent attorney to file your patent application and shepherd the application through the legally complex process of Patent Office review.
For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.
A design patent under 35 U.S.C. § 171 protects the ornamental appearance of a functional article—not its function. The legal test, established in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), asks whether an “ordinary observer” familiar with prior art designs would be deceived into thinking the accused design is the same as the patented design. The scope of a design patent is defined entirely by its drawings—unlike utility patents, which use written claims. This makes drawing quality the most critical element of a strong design patent application.
Design patent drawings must comply with 37 C.F.R. § 1.84 and must show the article from multiple angles. A standard application includes front, rear, left side, right side, top, bottom, and perspective views. Broken lines in the drawings are strategically important: they indicate portions of the article not claimed as part of the ornamental design. Using broken lines for functional elements or environmental context while depicting the ornamental features in solid lines allows the applicant to broaden the effective scope of protection. A skilled patent attorney or professional patent illustrator will strategically choose which portions to render in solid versus broken lines.
After filing, a USPTO examiner reviews the application for compliance with § 171 (ornamentality), § 102 (novelty), and § 103 (non-obviousness). Common grounds for design patent rejection include:
Design patents filed on or after May 13, 2015, have a 15-year term from the date of grant, with no maintenance fees required. Older design patents have a 14-year term. Design patents are typically granted faster than utility patents—often within 18–24 months—and carry lower filing costs. This makes design patents an efficient protective measure for consumer products with distinctive appearances.
Enforcing a design patent requires demonstrating infringement under the Egyptian Goddess ordinary observer test. Importantly, the Supreme Court’s decision in Samsung Electronics Co. v. Apple Inc., 580 U.S. 53 (2016), clarified that design patent damages under 35 U.S.C. § 289 are calculated based on the infringer’s total profits from the “article of manufacture” to which the infringing design was applied—which may be a component rather than the entire product. This damages question continues to be litigated and has major implications for technology and consumer electronics companies.
Design patent protection is time-limited, but trade dress protection under the Lanham Act can be perpetual. Trade dress protects the overall commercial image of a product or packaging—including its shape, color scheme, and aesthetic—if it has acquired distinctiveness and is non-functional. After a design patent expires, brand owners can continue to exclude competitors from copying a product’s appearance through trade dress law, provided they can demonstrate secondary meaning. A well-coordinated IP strategy pursues both design patent registration and trade dress development simultaneously.
Contact the patent attorneys at Revision Legal at 231-714-0100 to protect your product’s distinctive appearance.
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