Design Patent Applications

Design Patent (35 U.s.c. § 171)

• Protects the ornamental (visual) appearance of an article of manufacture
• What it protects: the specific visual design — shape, configuration, surface ornamentation, or combination
• What it does NOT protect: functional features
• How something works

Design Patent

• Term = 15 years from grant (AIA patents; pre-AIA = 14 years)
• Claims = single claim defined by drawings
• Prosecution = 12-18 months (much faster)
• USPTO fees = $260 small entity (base filing fee)
• Maintenance fees = NONE (no maintenance fees — unlike utility patents)
• Subject matter = ornamental appearance of functional article
• Infringement test = ordinary observer test (Egyptian Goddess)

Utility Patent

• Term = 20 years from filing
• Claims = multiple specific text claims
• Prosecution = 2-4 years
• USPTO fees = $980 small entity (base filing fee)
• Maintenance fees = 3.5, 7.5, and 11.5 years
• Subject matter = functional method, apparatus, or composition
• Infringement test = all-elements test

What Design Patents Protect

• Product appearance (the shape of Apple's iPhone; the design of a luxury watch)
• UI/icon design (software icons; graphical user interfaces — design patents can cover GUIs if there is a display showing the design)
• Packaging design (the shape of a Coca-Cola bottle)
• Product component appearance (the specific ornamental design of a car headlight)
• APPLE v.

Samsung

• Most famous design patent case
• Apple's design patents on iPhone were worth $399M in damages (though later reduced on appeal)
• Demonstrated design patents can be extremely valuable for consumer products

When to File Both

• File utility patent to protect the function
• File design patent to protect the appearance
• Use both to create overlapping IP protection.

Drawing Requirements (37 C.f.r. § 1.84)

• Black-and-white line drawings required (unless color is an essential feature of the claimed design)
• Professional drafting quality
• Consistent proportions across all views
• All views must be consistent (same design shown from all angles)

Required Views

• Sufficient views to fully disclose the claimed design
• Typically required for a 3D product: front view
• Rear view
• Left side view
• Right side view
• Top view
• Bottom view
• Perspective view (optional but recommended to show depth)

Optional Views

• Sectional views (for complex internal configurations)
• Environmental views (showing product in use — for context only, not part of the claimed design)
• SOLID LINES vs.

Broken Lines

• Features shown in broken lines are NOT claimed (used to show environment or non-claimed portions)
• This is the single most important design patent drafting decision
• NARROWER DESIGN (more solid lines): easier to show infringement
• Riskier against prior art (more specific prior art can anticipate)
• BROADER DESIGN (more broken lines = less claimed): harder to show infringement
• More resistant to prior art

Design Patent Families

• File multiple design applications with different solid/broken-line configurations
• Cover both specific and broader versions of the design

Electronic Drawings

• USPTO accepts digital drawings in TIFF format
• Professional patent illustration software or services are recommended.

The Ordinary Observer Test

• Infringement requires that 'an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into thinking that the accused design were the same as the patented design'
• The question is whether the ordinary observer would confuse the two designs
• The test is applied in context of the prior art: if the prior art is similar to both the patented design and the accused design, small differences may be significant
• If the prior art is far from both designs, even larger differences may not distinguish them

Who is the Ordinary Observer

• A person familiar with the prior art in the design area
• Not an expert or designer
• A typical consumer

What Matters

• The OVERALL visual impression
• Not element-by-element comparison (unlike utility patent infringement)

Doctrine of Equivalents

• Less developed for design patents
• The ordinary observer test is itself somewhat equivalent-based
• CLAIMED vs.

Unclaimed Features

• Features in broken lines in the patented design are NOT part of the claim
• The accused design need not include those features to infringe
• Only solid-line features of the patented design are considered

Partial Article Designs

• A design patent can be filed on a component of a product
• Samsung v. Apple (S.Ct. 2016): for design patent damages, the 'article of manufacture' can be a component (not necessarily the entire product)
• This reduced the design patent damages calculation when only a component was protected by the design patent.

Multi-angle Coverage

• File separate design patent applications for: the front (most visible to consumers)
• The specific UI/UX elements (if software product — GUI design)
• The 3D shape and configuration
• Key product details (handle; button placement; distinctive curves)
• SOLID-LINE vs.

Broken-line Family

• File a broad design application (most features in broken lines; claiming only the core distinctive visual element)
• File a narrow design application (most features in solid lines; claiming the specific exact product appearance)
• Broad provides fallback if narrow is anticipated by prior art
• Narrow is easier to show infringement

Continuation Design Patents

• Design patents support continuations: you can file a continuing application based on the original drawings
• Use different solid/broken-line configurations in the continuation
• File during the life of the parent application
• This creates a family of design patents with different coverage

Coordination with Utility Patents

• Design patent on the appearance
• Utility patent on the function
• Together: the competitor cannot copy the look OR the function without liability
• Trade dress (Lanham Act § 43(a)) additionally protects non-functional product appearance if it has acquired distinctiveness

Timeliness

• No date bar for public disclosure (within the US — the 12-month bar applies)
• But INTERNATIONAL protection: file US design patent or claim priority under the Hague Agreement before public disclosure (no grace period in many countries)

Hague Agreement International Filing

• One international design application covers 95+ member countries
• Filed through WIPO
• Much cheaper than filing separately in each country

Cost

• Low — total through issuance may be $2,000-$5,000 in attorney fees + modest USPTO fees
• Excellent ROI for products with distinctive visual design

Gui/software Design Patents

• File design patents on mobile app screens
• UI component arrangements
• Icon designs
• Must show the design on a display (computer screen/phone screen).

Design Patents (35 U.s.c. § 171)

• Limited 15-year term
• Covers ANY ornamental article design (functionality of the article is irrelevant to design patent, but non-functional ornamental elements are what's protected)
• Infringement test: ordinary observer test (Egyptian Goddess)
• Requires USPTO examination and issuance
• TRADE DRESS (LANHAM ACT § 43(a); 15 U.S.C. § 1125(a)): protects the total image and overall appearance of a product or its packaging
• No time limit (as long as the trade dress retains distinctiveness)

Non-functionality

• Trade dress cannot protect functional features
• A feature is functional if it: is essential to the article's use
• Affects the cost or quality
• Gives rise to a patent (but: the existence of a design patent does NOT automatically make a feature non-functional for trade dress purposes)

Secondary Meaning (Acquired Distinctiveness)

• The design must have become distinctive in the minds of consumers — they associate the design with the source
• How to establish: length and exclusivity of use
• Advertising expenditure
• Consumer surveys
• Actual confusion evidence
• INHERENT DISTINCTIVENESS (for packaging): some packaging trade dress is inherently distinctive (unusual shape)
• Product configuration trade dress is never inherently distinctive (Wal-Mart Stores, Inc. v. Samara Bros., S.Ct. 2000) — must prove secondary meaning

Term

• Design patent = 15 years
• Trade dress = unlimited (while distinctiveness maintained)

Registration

• Design patent requires USPTO examination
• Trade dress can be registered on the Principal Register at USPTO (Lanham Act § 2) but can also be asserted without registration

Functionality

• Design patent: ornamental non-functional appearance protected
• Trade dress: non-functional trade dress (design patent existence may cut against functionality defense)

Combined Strategy

• File design patent at product launch (fast; cheap; no distinctiveness required)
• Build trade dress rights over time (secondary meaning through exclusive use and marketing)
• After design patent expires, trade dress provides continued protection if secondary meaning established
• For famous brands: trade dress + design patents create robust visual IP protection that outlasts any single patent term.