When one thinks of filing a patent application, one usually thinks of an application for a utility patent. Another option that an inventor may choose to consider is applying for a design patent. Utility patents cover functional aspects of an invention, while design patents cover the asthetic features.
Design patents differ from utility patents in a number of basic ways. A design patent is granted to cover the ornamental design of an object that has practical utility. For example, a design patent may be obtained for a new shape of a beverage container, the particular shape and features of the tread of a shoe, computer icons, and other items that have practical utility.
A design patent is not permitted for something that exists for purely asthetic reasons, such as a work of art. A painting, sculpture, or other work of fine art would be protectable by copyright and possibly other intellectual property rights, but would not be eligible for design patent protection.
An invention may be entitled to both a utility patent and a design patent since a utility patent protects the way an article is used and works and a design patent protects the way an article looks. If the design–the way the article looks–is dictated primarily by the article’s function, it would not properly be the subject of a design patent. An example may be the shape of a gear that is designed primarily to fit with other gears and not for asthetic purposes.
The statutory requirements for design patents are similar to that for utility patents. The design must be novel and non-obvious; the examiner will perform a search of the prior art to be certain that the design meets these requirements. Furthermore, the drawings must clearly show the features sought to be protected by patent.
Design patent protection lasts for 14 years from the date the patent issues compared to 20 years from the earliest filing date for a utility patent. No maintenance fees are required for design patents.
Another advantage of design patents over utility patents is that they seem to be much easier to obtain. Patently-O has been reporting a number of statistics on design patents. They have an allowance rate of about 90% over the last few years, compared to utility patent allowance rates of under 50%. Over 80% of design patent applications are allowed without rejection; only 1.2% are rejected based on prior art with a larger number rejected on formality grounds.
In an era of increasing backlog and pendency of utility applications, more than half of design patents are pending for less than a year, with the average pendency being about 16 months.
To be sure, I would still not categorize design patents as providing the same level of protection as utility patents. For inventions that would be entitled to both utility and design patent protection, a design patent would provide some protection while waiting for a utility patent to issue. They are also cheap since they don’t involve a great deal of preparation and prosecution. Inventors should always consider whether their inventions are eligible for design and utility patent protection.