Design Patent. A design patent is for a new and nonobvious ornamental design for an article of manufacture. This includes a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture.  It further includes a design for the shape or configuration of an article of manufacture.  However, a picture standing alone is not patentable. A design patent is not permitted for something that exists for purely aesthetic reasons, such as a work of art: An original painting, sculpture, or other work of fine art would be protectable by copyright, but would not be eligible for design patent protection.

• Do I need a design, utility or plant patent?  See the FAQ that describes “What is Patentable” in each type of patent.

Protection. A design patent protects only the appearance of an article, and not its structural or functional features.

DESIGN PATENT APPLICATION REVIEW

Proceedings. The proceedings relating to granting of design patents are basically the same as those relating to utility patents.

Drawings. The value of a design patent is largely dependent upon the skillful preparation of the drawings.  Drawings are normally required to be submitted in black ink on white paper.  Photographs are acceptable only in applications in which the invention is not capable of being illustrated in an ink drawing or where the invention is shown more clearly in a photograph.  Color photographs or drawings are also not permitted unless there is a good reason, a petition and additional fee is filed and the petition is granted.  When it is urgent to get a filing date, color photographs/drawings can be submitted, but these will be considered by the Patent Office to be informal drawings and will have to be replaced by amendment to the application.

DESIGN PATENT APPLICATION COSTS

Costs. A small entity should expect a design patent application to cost about $1,908 through filing and $3,238 through issuance.

The $1,908 includes attorney fees of $1,200 and estimated filing costs for a small entity of $408 ($204 for a micro-entity), graphic artist fees of $280 and PNC bank’s international wire transfer receipt fee of $20 (if you are not outside the U.S. and not using a wire transfer than you can reduce the estimate by $20. For later costs (about 12-18 months after filing), a small entity should expect costs of about $1,150, which includes estimated added potential prosecution costs of $600 and allowance costs estimated at $546.

A large entity should expect costs through filing of $2,520, including attorney fees of $1,500 and filing fees of $1,020. After filing costs (about 12-18 months after filing) are estimated at $2,330, including attorney fees of $1,340 and allowance costs of $990.

There is no publication fee for a design patent. Also, no fees are necessary to maintain a design patent in force.  United States Patent and Trademark Office filing charges may vary.

(According to the American International Property Law Association 2017 Report of the Economic Survey, the typical attorney fees in 2016 for preparation of a design patent application are in a range of $1,500 – $1,600.)

Services After Filing. Attorney fees for a small entity after filing are charged at the rate of $250 per hour.  Patent prosecution activities after filing are similar to a utility application, but are usually much less complex. If the Patent Office examination leads to a determination that an applicant is entitled to a design patent under the law, a notice of allowance is sent to the applicant’s attorney, calling for the payment of the issue fee.  Attorney fees for filing the allowance papers are $250.

DESIGN PATENT LIFETIME

Patent Lifetime. A design patent has a term of 15 years from grant.

DESIGN PATENT APPLICATION UNIQUE ASPECTS

Patent Application Structure. The specification of a design application is short and ordinarily follows a set form. Only one claim is permitted, following a set form. The drawing of the design patent conforms to the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope of patent protection.

International filing. The Hague Agreement Concerning the International Registration of Industrial Designs (Hague Treaty) and the Patent Law Treaty enable an international filing. Any person who is a U.S. national, or resident, or company with an industrial or commercial establishment in the United States may file an international design application for international registration with the U.S. Patent and Trademark Office (USPTO) (thereby enabling U.S. applicants to file a single application with USPTO instead of separate applications in multiple countries).

Provisional Applications? No.  One may not file a provisional design patent application.

Design Applications Published? No.  Design applications are not subject to application publication after 18 months as are utility applications.

PROCEEDING TO A DESIGN PATENT APPLICATION

How to Proceed. Telephone (703-242-1247) or email Louis Ventre, Jr. with a short description of the design you want in your application. If the Law Firm has no conflicts and agrees to represent you, you will be sent a retainer agreement with additional instructions on what information is needed. As with utility patents, a preliminary search of U.S. patents and U.S. applications will be done to make a judgment on patentability. After you receive the preliminary patentability determination, if you then decide not to submit an application, your retainer will be refunded, except for inventions in areas of high failure risk, typically defined as abstract inventions. For the high failure risk areas, all but $1,000 is refundable. These high risk areas will be identified in advance so that there should be no confusion on your part.

INFRINGEMENT OF A DESIGN PATENT

Design Patent Infringement. To have infringement of a design patent:

1. The starting point is the ordinary observer test formulated in the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871). The Court stated that the test of identity of design “must be sameness of appearance, and mere difference of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity.”

The Court of Appeals for the Federal Circuit recently held: “the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article ’embod[ies] the patented design or any colorable imitation thereof’.”  Egyptian Goddess, Inc. v. Swisa, Inc., No. 2006-1562 (Fed. Cir. 9/22/2008) (Fed. Cir., 2008) (citations omitted, emphasis added).

2. 2. “If the claimed design consists of a combination of old features that creates an appearance deceptively similar to the accused design, even to an observer familiar with similar prior art designs, a finding of infringement would be justified. Otherwise, infringement would not be found.” Egyptian Goddess at 20.

3. On 11-SEP-2013, the Federal Circuit elaborated on the analysis needed to determine whether or not a design is an obvious variation of an existing design when deciding on infringement:
   

   “When assessing the potential obviousness of a design patent, a finder of fact employs two distinct steps: first, ‘one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design’; second, ‘[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.’ Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal quotations omitted); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012).

   “Under the first step, a court must both ‘(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.’ Durling, 101 F.3d at 103. The ultimate inquiry in an obviousness analysis is “whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” Id., quoted in Apple, 678 F.3d at 1329. High Point Design v. Buyer’s Direct (Case No. 2012-1455), Slip opinion, p.12.

   The Federal Circuit also clarified that the “ordinary observer” is the rather un-ordinary skilled designer familiar with the articles involved:

   “The ultimate inquiry in an obviousness analysis is “whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” Slip opinion, p.12 (citations omitted).

   It certainly looks as though the Federal Circuit has created two different tests for obviousness, one (ordinary observer) for deciding whether a design is patentable, and another (ordinary skilled designer) when deciding on whether or not there is infringement of a patented design.

MORE INFORMATION ON PATENT APPLICATIONS

More Answers on Patents. A vessel hull design may also be registered under a copyright law as explained on the Law Firm’s copyright page.  See the FAQ page for more questions answered on patents, the plant patent page for information on plant patents, and the Utility Patent Details page for general patenting details.