Q&A: A design patents primer

Design patents are increasingly important to American innovators. Here’s what you need to know.

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In March 2014, the U.S. Patent and Trademark Office (USPTO) issued its 700,000th “design patent.” The patent was awarded to inventor Jason Avery for his design of the LeapsterGS™ handheld game for children.

While design patents have received far less attention from policymakers than other areas of intellectual property law, they are increasingly important to innovators. The number of design patents filed with the USPTO has grown significantly in recent years.

David Gerk is a patent attorney in the Office of Policy and International Affairs (OPIA) at the U.S. Patent and Trademark Office (USPTO). He advises the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO on domestic and international intellectual property issues. He is also currently leading the USPTO’s implementation of the Hague Agreement Concerning the International Registration of Industrial Designs in anticipation of U.S. membership in the Hague Union.

R3.0: What is a “design patent,” and how is it different from other kinds of intellectual property protection?

Gerk: Design patents, utility patents, copyrights and trademarks are each different types of intellectual property (IP). Like tools in a craftsman’s tool belt, each tool can help protect an inventor’s innovations, whether it’s a new invention, the distinctive “identity” of goods and services, or the specific creative expression of someone’s ideas, such as a song or a book. In some instances, more than one of these IP tools can be used together to protect innovation.

Design patents protect new, original, and ornamental designs that are embodied in or applied to an “article of manufacture” (i.e. a product). The key terms to keep in mind when remembering design patents is “ornamental.” People often think about the aesthetic aspects of consumer products when they think about designs, whether it’s footwear, household goods, jewelry, electronic devices, vehicles, and so on. However, design patents also protect designs that may not immediately come to mind – such as graphical user interfaces (GUIs) and icons on laptops, tablets, and mobile phones.

In contrast, “utility” patents protect new and useful processes, machines, and products (“manufactures”), or new and useful improvements on existing inventions. You can also get a utility patent to protect a specific formula for how something is made – “compositions of matter” – such as for a chemical compound. As the name “utility patent” implies, these patents protect functional inventions.

R3.0: So if a design patent protects what something looks like, how is that different from trademark or copyright?

Gerk: Trademarks are words, phrases, symbols or designs, that identify and distinguish the source of one party’s products from another. For example, brands are often trademarked. Although you can protect a design with a trademark, that protection is provided only in relation to how that design is used to designate the source of origin for a product or service. You can get both design patent and trademark protection for the same design, assuming that you meet the respective requirements for each.

Copyrights protect original works of authorship fixed in any tangible medium – such as words, photos, sculptures, etc. Although you can protect a design with a copyright, the design concept has to be separable from the utilitarian article it’s attached to. Thus, copyright protection requires separability of the design concept from the useful article. Design patents, on the other hand, require the claimed design to be embodied in, or applied to, an article of manufacture (object).

R3.0: What’s the historical rationale for why designs should be patentable?

Gerk: Design patents have been part of our intellectual property framework for a long time. In fact, the first U.S. law providing for design patent protection was passed in 1842.

The impetus for protecting “designs” came about in response to the prevalence of copycats misappropriating the popular designs of the time, both here in America and elsewhere across the globe. For example, laws providing protection for “design” were developing in Britain during that time period as well.

At that time, manufacturers in a variety of industries, including iron works (think stoves, railings, and kitchen utensils) and textiles, began including ornamental designs on their products to distinguish themselves from their competition. These original designs were quite ornate, time-consuming and not surprisingly – given the time period – often done by hand. When copycats began to use these designs to sell their own products, this prompted efforts by businesses to seek separate protection for their designs, especially since they weren’t being effectively protected under either patent or copyright.

For those who may want more details about the history of U.S. design patents, The Origins of American Design Patent Protection, by Jason DuMont and Mark Janis, provides a detailed historical account.

R3.0: If you’re an inventor, how do you go about applying for a design patent?

Gerk: The process for applying for a design patent is similar to the application process for a utility patent. The most obvious distinction is the contents of the application.

While utility applications often include multiple pages of detailed descriptions of the claimed invention, the core of design patent applications are the drawings that depict the claimed design. Design applications are also required to include a claim and have a sufficient description under §112 as well, but these items generally reference the drawings in the application.

The application then goes to a patent examiner, who will review the application for completeness, look at “prior art” – i.e., any evidence that the design is already known to the public – and then make a determination whether the inventor is entitled to a patent. During the process, inventors also have the opportunity to respond to objections from the examiner or if an application is rejected.

In 2012, Congress passed the Patent Law Treaties Implementation Act, which implements America’s agreement to join the Hague Agreement Concerning the International Registration of Industrial Designs.

When the U.S. becomes a member of the Hague Union, applicants will be able to file applications either directly with the World Intellectual Property Organization (WIPO) or indirectly through the USPTO to pursue industrial design protection in multiple jurisdictions that are parties to the Hague Agreement.

Of course, they will still be able to pursue design protection in the U.S. in the same way they currently do domestically. The Hague system will provide an alternative mechanism for filing an application that pursues U.S. design rights, and it is expected to provide efficiencies and cost savings to applicants pursuing rights in multiple jurisdictions.

R3.0: How does your office determine whether a design is patentable? 

Gerk: Our examiners review both design patent and utility patent applications under many of the same criteria for patentability, such as novelty, “non-obviousness” and proper disclosure (e.g., written description). (The applicable statutes are 35 USC §§102, 103, and 112). Design patent applications are also reviewed to ensure they are directed to the proper subject matter of ornamental designs for “articles of manufacture” under 35 USC 171.

If you’re awarded a patent, you have the right to exclude others from making, using, selling or offering for sale the design or invention claimed in your patent. In the case of a utility patent, that protection lasts for 20 years from the date you filed your application. For designs, however, your patent will last for 14 years – soon to be 15 years – from the date your patent is issued.

R3.0: What trends has the PTO seen in design patent applications?

Gerk: In 2009, 25,000 design applications were filed with the USPTO, and in 2013, the USPTO saw 35,000 design applications. In that short time period, that comes to about a 40 percent increase in design patent filings in the United States.

By comparison, fewer than 15,000 design patent applications were filed with the USPTO annually in the early 1990s. It is interesting to note that design applications for graphical user interfaces (GUIs) and icons are experiencing the most rapid growth in filings with the USPTO. I understand that this is also true in other jurisdictions that permit design applications covering GUIs and icons.

R3.0: Do other countries recognize design patents and are there major differences between how other countries and the United States treat design patents? Do any of these differences arguably present advantages or disadvantages to US inventors?

Gerk: “Designs” are generally protected under two types of systems across the globe: (1) design patent systems and (2) design registration systems. Design patent systems, like the one in the United States, involve the substantive examination of design applications before the rights are granted. In the United States, design patent applications are examined for patentability before the design patents are issued.

Design registration systems, on the other hand, typically involve a review of design applications for satisfaction of formalities requirements before design rights are issued. A substantive examination for novelty, obviousness, etc., will typically not be performed. Instead it will be left until a design rights owner enforces the design registration before these types of entitlement issues are considered for the first time.

Each of these systems has its respective benefits and detriments, supporters and critics.

Speed and cost are factors pointed to by advocates of design registration systems. Reviewing for formalities but not substantive patentability allows registration systems to grant rights relatively quickly and with low fees in light of less resources and time allocated to examination. Since substantive review of registrations only occurs when registrations are enforced, fewer resources are needed before granting rights, which keeps costs and time for issuance down to a minimum.

Design patent systems, on the other hand, can arguably: (1) weed out non-novel designs; (2) set a minimum threshold of quality and clarity; (3) give applicants and the public improved understanding of the scope of rights early in the process; (4) allow for varied strategy and scope of coverage; (5) allow for “salvage of good designs”; and (6) reduce frivolous lawsuits and the risk of overly zealous litigants.

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