When most people come to us with the desire to obtain a patent, they are interested in obtaining a utility patent. Utility patents allow an inventor to protect the functional advantages of a particular machine, article of manufacture, composition or process. In this sense utility patents are very powerful tools that prevent the competition from legally offering a product and/or service that reads upon one or more of the claims made in the patent.
BUT there are two other types of patent applications as well: the plant patent and the design patent. Plant patents protect novel and non-obvious asexually produced plants and as such have little relevance for most inventors. In fact, most patent attorneys have never drafted a plant patent application and will likely never do so in their careers, present company included.
Design patents protect the ornamental aspects of an otherwise functional article so long as the aesthetics of the article are not dictated wholly by function. An example is in order. Consider the all electric Tesla Roadster: a utility patents would be used to protect novel aspects of the vehicle’s drive system (i.e what’s under the hood); whereas, a design patent would protect the distinctive look of the vehicle. A competitor could make a roadster having a similar look to the Tesla that has a conventional gasoline drive train without fear of infringing any utility patents that have issued concerning the Tesla’s electric drive train. In contrast a competitor could make an automobile having a similar drive train as the Tesla without fear of infringing the company’s design patents. In the example, Tesla may want to pursue both design and utility patents to protect its roadsters distinctive look and technical features.
Historically, design patents have a bad reputation not wholly without merit. For one, they have been and continue to be used by unscrupulous invention promotion companies as a cheap and inexpensive way to get clients patent protection. The problem has been that these clients often believe that they have utility-type protection (protection for the functionality of their invention) when in reality only “the look” of the invention is protected. AND in many cases, inventors do not even have a strong idea about what the invention will look like once in production when the design patent application is filed. As a general rule: design patent applications should only be filed once the look of an invention is finalized or close to being finalized.
Another historic problem with design patents is that they have been notoriously difficult to enforce. I can’t recall the exact statistic but I do recall that a successful infringement litigation pertaining to a design patent is the exception rather than the rule. I won’t go in to the reasons why that is here. Suffice it to say, one had to think long and hard before committing potentially hundreds of thousands of dollars to initiating an infringement action that they were likely to lose at least based on statistics. These terrible statistics also made it less likely that an accused infringer would settle early almost ensuring high costs.
BUT this article is about why design patents might be worth the expense not why they are not. This past year the law concerning the enforcement of design patents changed drastically based on an en banc decision of the Federal Circuit Court of Appeals. The specifics are beyond the scope of this post, but the probability of successfully enforcing a design patent in my opinion has increased dramatically with this decision. Simply put, design patents now have increased strength and consequentially value, and as such, may be worth pursuing more so than in the recent past.
Please understand that despite the change in the law, design patents are still subject to the specter of misuse as discussed in a previous paragraph, but when properly utilized they should be seriously considered by the prospective patentee. Often they are best used in combination with a utility patent application to protect both looks and functionality of an article. As an initial consideration, we do not recommend pursuing design protection for an invention until the inventor is confident his/her design is finalized; that is, close to the look of the invention as it will go to market OR the look for which protection is sought is one that competitors would likely pursue.
There are some very appealing advantages to design patents. They are relatively inexpensive. A typical design patent application can be prepared and filed for about $2,000-$2,500 including attorney fees; whereas a typical utility patent application can cost $6,000-$10,000. Further, the ultimate cost to obtain a design patent is in most cases under $4,000; whereas the ultimate cost to obtain a utility patent is typically $10,000-20,000.
Design patents tend to issue much more quickly than utility patents. In our experience, design patents issue within 10-16 months after filing; whereas, utility patents take anywhere from 24-48 months. Further, most design patent are granted allowance during examination (>90% according statistics I recently reviewed) versus about 60% or so for utility patent applications. Accordingly, if you want to list your product as “Patented” sooner rather than later, a design patent might just do the trick.
Given the foregoing especially considering recent court decision, I am less pessimistic about design patents than before. In fact, I will go so far as to say that when the look of an invention is an important aspect or consideration of the invention, whether or not to apply for a design patent SHOULD be discussed with your patent attorney.
