TAKEAWAY: Design patents protect the ornamental features of a product and can be a valuable addition to a company’s IP portfolio. U.S. applicants soon will have the option to file an international design application to seek protection in multiple countries, including provisional design protection in the United States.
Patent strategy often focuses on the functional aspects of an invention — technology that makes something faster, stronger, or more efficient. But aesthetics can be equally or more important. Distinctive features of a design, even if relatively simple, can be key in making a product stand out from the pack — think LEGO®, the iPhone®, even the Volkswagen Beetle. All of these products are easily recognizable and prone to imitation. And all are, or have been, patent protected.
Design patents protect the ornamental features of a product, or the unique visual characteristics that often stand out in consumers’ minds. Design patent protection can be particularly effective as a complement to utility patents by discouraging confusion at the point of sale caused by competing products that are visually similar. While the two types of patents share many similarities, there are some key differences.
For example, design patents have a single claim that covers one design (e.g., one version of a product), with the scope of the claim defined by drawings rather than words. As such, the quality of the patent drawings is paramount to accurately convey and protect the innovative aspects of the design and to comply with the necessary disclosure requirements in the USPTO. While utility applications usually describe many variations on an inventive concept, alternative product designs must be filed in separate design applications.
Another difference is that provisional patent rights are currently available for utility but not design patents. Provisional rights allow patentees to recover damages for certain activities by others between the publication date of a pending application and the date the application issues as a patent. Unlike utility applications, U.S. design applications do not publish before issuance. But provisional design protection soon will be available in the United States. On May 13, 2015, the Hague Agreement Concerning International Registration of Industrial Designs goes into effect, giving U.S. applicants the option to file an international design application to seek protection in multiple countries. Because international design applications are published through the World Intellectual Property Organization (WIPO), provisional rights will be available for U.S. patents that issue from international design applications.
Yet another difference between design and utility patents is patent term. Design patents have a term of 14 years from issuance, whereas utility patents have a term of 20 years from the effective filing date of the utility application. As part of implementing the Hague Agreement, the term for design patents will increase to 15 years from issuance, for patents issuing from applications filed on or after May 13, 2015.
Other practical considerations favor incorporating U.S. design patents for a robust IP portfolio. Design patent applications are usually much less expensive to prepare and file than their utility counterparts, often issue more quickly than utility patents, and do not require maintenance fees. As a result, it is feasible to protect different aspects of a single design and/or variations on a product’s design with multiple patents, providing for a stronger and more diverse portfolio.