Design Patents

Have you ever noticed that all products – even very similar ones like bottles, smart­phones, and jewelry – come in slightly different shapes and sizes? These subtle vari­a­tions are of course intended to make sure a design is unique, but they can also make sure that this unique­ness is preserved legally within the United States. The official term for this pro­tec­tion is a design patent, and they’re issued by the United States Patent and Trademark Office (USPTO). But what are these design patents and how do you apply for one?

Design patents are legal documents con­firm­ing who owns a par­tic­u­lar product design. They have tra­di­tion­al­ly lasted 14 years from the day of reg­is­tra­tion, but this was increased to 15 years in May 2015. The USPTO is in charge of issuing these patents and de­ter­min­ing what is con­sid­ered a design. In their view, it “consists of the visual or­na­men­tal char­ac­ter­is­tics embodied in, or applied to, an article of man­u­fac­ture”. Basically, this means that it refers to how a design looks – covering the shape, pro­por­tions, and or­na­men­ta­tion of a par­tic­u­lar item.

A design patent can cover the shape and or­na­men­ta­tion of the design of an entire item or just part of it. So if you’re designing a lunchbox with a unique lid, you can choose to take out a design patent on the lunchbox but with spec­i­fi­ca­tions that would only refer to the lid. This means that the shape of your main box could be copied but the lid couldn’t be. Since design patents are only issued for designs that are con­sid­ered to be com­plete­ly unique this can be a useful solution for pro­tect­ing a product with one special feature but an otherwise fairly standard design. It’s also possible to take out a design patent on two different features of the same product. So, using the same example, you could patent the design of the lid and the design of the box container for the lunchbox as well.

Design patent claims can only apply to one specific design concept, while multiple designs that are con­sid­ered to be in­de­pen­dent and distinct from one another must be filed as separate requests. So if you’re designing a lunchbox and a hat rack, you’ll need two in­di­vid­ual design patents to protect them both. The same would be true if you were designing two lunch­box­es with dis­tinct­ly different shapes and features. But very slight dif­fer­ences, like subtle mod­i­fi­ca­tions or separate em­bod­i­ments of the same design concept may be included as a single design patent ap­pli­ca­tion. The USPTO decides whether multiple designs may be clas­si­fied under a single design patent or not.

There are four basic types of legal pro­tec­tion for in­tel­lec­tu­al property offered by the USPTO: design patent, utility patent, copyright, and trademark. Utility patents work alongside design patents and cover the practical use and function of an item. These two should be mutually exclusive, which means that some design patents will be rejected if they’re con­sid­ered to also cover a practical use too. An example of this could be a design patent claim for the shape of the inside of a washing machine, as it would also affect the func­tion­al­i­ty of how many items of clothing it could hold per load. Utility patents also last longer on average, typically expiring up to 20 years after reg­is­tra­tion. Copyright is more personal than a patent, as it protects the orig­i­nal­i­ty of the par­tic­u­lar concept. This means that the whole concept of the design must qualify as entirely original, rather than just the ap­pear­ance of it. Copy­right­ing often transfers to less phys­i­cal­ly mea­sur­able creations like literary works or songs and lasts for con­sid­er­ably longer than a design patent. Typically, copyright lasts for a lifetime and often longer still. Objects can be covered by both design patents and copy­rights: one of the most famous examples of this is the Statue of Liberty. Lastly, trade­marks tend to be concerned with slogans, catch­phras­es, logos, or symbols. These are used to guarantee that a par­tic­u­lar product comes from a par­tic­u­lar brand. Trade­marks can last forever, so they’re a good way to add pro­tec­tion to an expiring design or utility patent if it has become a feature of your brand. The design patent that covered Coca Cola’s unique bottle shape has long since expired, but it became such a hit that Coca Cola took out a USPTO trademark on it, meaning it can never be copied within the United States.

Design patents may be the least pro­tec­tive of the four principle patents and trademark offered by the USPTO, but they still have an important role to play. Simply put, having your design patented offers you the chance to ensure that the or­na­men­ta­tion of it remains unique for 15 years. This guar­an­tees that the specifics of a par­tic­u­lar design are protected: so if you’re in the olive oil industry and take out a patent design on the curvature of your flagship olive oil bottle, then your com­peti­tors will be blocked from creating anything that is con­sid­ered to be “sub­stan­tial­ly similar”. This wording is important – a new design doesn’t actually have to be a like-for-like copy of a patented design, it just has to be similar enough in the eyes of the USPTO that it is deemed to infringe upon the design patent.

Design patents aren’t just for man­u­fac­tur­ers, however. By forcing legal re­stric­tions on what designers can and can’t do, design patents encourage variety within com­pet­i­tive markets. This benefits consumers and the industry as a whole.

As we’ve already discussed, design patents are handled by the USPTO and reg­is­tra­tion typically takes around 2 years to complete. Each design patent ap­pli­ca­tion should consist of the following separate parts:

• The preamble: the preamble is like an in­tro­duc­tion to the patent claim, and should contain the claimant’s name, the name of the design in question, and a short summary of the design and its use

• Ref­er­ences to other ap­pli­ca­tions: your design patent should contain any necessary cross-ref­er­ences to other ap­pli­ca­tions (e.g. if you’re pro­cess­ing separate patents for two design features of the same product)

• Statement about R&D (if ap­plic­a­ble): if your design is federally sponsored for research and de­vel­op­ment purposes, you’ll need to clarify this here

• Figure de­scrip­tions: design patents are governed according to drawings, which must be included later in your design patent ap­pli­ca­tion. The figure de­scrip­tions for each drawing must be included be­fore­hand, and they should explain which portion, angle, and viewpoint of the design that the drawing describes. This could be something simple, like ‘the front elevation view of the right side of the design’. You may also include lengthier de­scrip­tions if necessary. Figure de­scrip­tions should also explain the reasons for omitting ad­di­tion­al diagrams, e.g. ‘the top plan is identical to the bottom plan and so has not been included’.

• Diagrams: designs should be presented either as drawings or as black and white photos. These should be as clear and accurate as possible – if your designs are unclear, loopholes could be exploited and the designs might be copied without you being able to claim com­pen­sa­tion. The USPTO prefers drawings, which should be completed in black ink on white paper, though they will accept black and white photos if drawings aren’t possible for whatever reason. All drawings or photos must be numbered in relation to their figure de­scrip­tion, so that it’s easy to piece the design together. In rare cir­cum­stances, the USPTO will grant per­mis­sion for ap­pli­ca­tions to be submitted with color drawings or pho­tographs, but only upon receipt of a formal request. This request should be worded as follows:

"The patent or ap­pli­ca­tion file contains a least one drawing executed in color. Copies of this patent or patent ap­pli­ca­tion pub­li­ca­tion with color drawing(s) will be provided by the Office upon request and payment of the necessary fee."

• The de­c­la­ra­tion: the final section of the design patent ap­pli­ca­tion is a de­c­la­ra­tion that the applicant has the right to use the design and that they’re re­spon­si­ble for the afore­men­tioned ap­pli­ca­tion.

Almost every famous design you can think of has been the subject of a design patent – es­pe­cial­ly the most iconic ones. Tra­di­tion­al classic games and toys like Monopoly, Lego, and the Slinky all received design patents, as well as the classic Barbie doll and G.I. Joe. The first design patent ever issued (U.S. Patent D1) was for a new font designed by George Bruce in 1842. Since then, there have been hundreds of thousands of suc­cess­ful design patent ap­pli­ca­tions.

Samsung mis­in­ter­pret­ed this design patent and ended up paying the price. The cunning move by Apple was to make the back of their design a dotted line – meaning it wouldn’t be covered by the design patent. If they wouldn’t have made that move, the different back of the Samsung smart­phone design would have meant that the two models couldn’t be called ‘sub­stan­tial­ly similar’. The same is true of the circular home button and the upper front camera panel – if one of those had been included as solid lines in the patent, then the overall Samsung design probably wouldn’t have infringed upon the iPhone design patent. This is an excellent example of how to patent your design ef­fec­tive­ly to be sure that you keep com­peti­tors at bay.

In­ter­est­ing­ly, Samsung was actually the global leader in US patents at the time, with over 5,500 total patents reg­is­tered in 2012, and the South Korean tech­nol­o­gy developer was also number 1 in design patent reg­is­tra­tion too with 378 in the same calendar year. Apple, by com­par­i­son, had just 1136 total patents, of which 353 of those being design patents. So despite having many fewer patents, Apple’s clev­er­ness over their design patent ap­pli­ca­tions meant that they walked away from the legal battle suc­cess­ful.

Design patents usually cost around $1,500 and typically take 2 years to complete. The cost is pre­dom­i­nant­ly made up of attorney fees, with a small filing cost. But with mul­ti­mil­lion pound set­tle­ments at stake for design patent in­fringe­ment, the cost is very worth­while if you have a great and unique design to protect. And as the Apple vs. Samsung battle proves, it’s sensible to check out the com­pe­ti­tion first, to make sure you don’t infringe on a rival design.