Preparing to File a Design Patent Application: Nuts and Bolts

Preparing to File a Design Patent Application: Nuts and Bolts

The articles describes the process of preparing a design patent application and is intended to assist the applicant in preparing a design invention disclosure for the patent attorney.

What Are Design Patents

A utility patent protects the way an article is used and works, while a design patent protects the way an article looks. Both design and utility protection may be obtained for a product if invention resides both in its utility and ornamental appearance. A design consists of the visual characteristics embodied in, or applied to, an article of manufacture. Examples of design patents include: a pattern on a pillow; a shape of an ear piece, a pattern on cleaning cloth, a shape of a pistol, a home button on a smart phone, and a GUI on a smart phone. A design patent gives the owner the right to exclude others from making, using, or selling the design claimed and disclosed in the patent for a period of fifteen years from the date of grant. A design patent owner can assert patent infringement in Federal Court and seek lost profits or royalties, and further request treble damages and attorney fees in the case of intentional infringement. In 2018 a jury awarded Apple Inc. over $500 million for infringement of its design patents covering the iPhone.

Preparing to File a Design Patent Application

A. Applicant Prepares Invention Disclosure.

The applicant should prepare a written disclosure of the design invention and provide it to counsel.  The disclosure can be short and concise, but should include the following information to ensure that counsel can promptly prepare and file a design application on the invention. The disclosure should remain confidential and can be provided to counsel by email. It should take less than an hour to prepare the disclosure.

  1. Identify the Article: Identify the article that embodies the design. For example, if the applicant seeks to patent a design graphic applied to a mattress, the applicant should identify “a mattress” as the article. This identification can be a one word answer, particularly for known consumer goods. The applicant should provide additional context for technical components and graphical user interfaces.
  2. Describe the Design: Identify and describe the design. This can be a short written description that references images or drawings of the design. It is important to distinguish between design elements that the applicant believes are new and distinctive versus design elements that may have existed in the public domain. This will allow the patent attorney to focus the claim scope on the inventive design.

    Indicate whether the applicant seeks to protect color. Generally speaking, the applicant should apply for the design in black and white because this will provide the broadest scope of protection. Claiming a specific color or pattern of colors limits the protection to that color range and requires a petition.

  3. Images of the Design: Provide images of the design, including top, bottom, front, back, left and right. To the extent available, provide drawings and drawing files.
  4. Proposed Product Launch: Identify the planned product launch date. If the product has previously been disclosed or sold, identify the date and circumstances of the disclosure. If possible, the applicant should file its design application before publicly disclosing the product or selling it. The applicant has one year from its first public disclosure to apply for a design patent in the US. This one year period is called the “grace period” and it is measured from the disclosure date to the filing date. Disclosures made during that grace period will not be considered prior art. Disclosures made prior to the grace period are considered prior art and will be cited against the application, even if it is the applicant’s own disclosure.

    To the extent the applicant has made disclosures outside of the grace period, it may still be able to seek design protection on new design features embodied in its existing product.

  5. Competitors: To the extent applicable, identify competitor in the marketplace that are currently known to the applicant. This identification should focus on products currently known to the applicant and it does not require searching.
  6. Inventor(s): Identify each person who contributed the conception of the design. Please include legal name, title, citizenship, residence address, email, and phone. Counsel will provide an inventor declaration and an assignment of rights for execution by the inventor prior to filing.

B. Counsel Obtain Design Patent Illustrations.

Counsel will review the disclosure and work with a professional illustrator to prepare design patent drawings. The design patent drawings are essential to a strong patent for several reasons. 

  1. Drawings cannot be materially changed once filed. Therefore, it is important to prepare drawings that fully and correctly disclose the applicant’s product.

  2. The Patent Office has very specific requirements for design drawings, including on the numbers of views, the shading required, how the drawings reflect light, and when to use lines versus stippling. The Office will reject drawings that do not comply with these requirements. A professional illustrator will ensure the drawings meet these requirements.

  3. The use of broken lines or dashed lines indicate elements not covered by the design patent. For example, in the design drawing below for the iPhone, the applicant uses dashed lines on the screen and the home button to indicate it is not claiming these design features in the patent. In this case, the applicant is seeking to protect the bezel design on the perimeter of the phone.  Counsel will confer with the applicant to ensure any unclaimed subject matter is shown in dashed lines.

C. Counsel Review and File the Design Patent

Within several weeks of receiving the design disclosure, counsel will provide a draft patent application for the applicant to review. The applicant and attorney can discuss the application and edit as necessary. The attorney will also provide “formal documents” for execution by the applicant. Each inventor is required to sign a declaration and a patent assignment, and the applicant will sign a power of attorney.  Counsel will file the application on authorization of the applicant and inventors. The formal documents can be filed after filing the application, however there is a late filing fee.

The Patent Office will substantively review the submission, conduct a search of the prior art, and issue a determination of patentability. In more than 60% of cases, the Office grants a notice of allowance without issuing any objection. The average application pendency from filing to grant is currently 20 months. For an additional fee and showing of good cause, the applicant can request to expedite examination, in which case the pendency is only two months (compared with twelve months for an expedited utility application).

About the AuthorWalter Welsh practices patent and trademark law at his firm Welsh IP Law, an intellectual property firm based in Darien, Connecticut. Welsh IP Law works directly with engineers, scientists, and executives to develop and grow intellectual property portfolios that protect and strengthen the business position. Its clients include Fortune 500 companies, global brands, family businesses, and start-ups.

Welsh IP Law is an intellectual property law firm based in Fairfield County, Connecticut. Our passion is increasing the value of our client’s business through strategic patent and trademark protection. We work directly with engineers, scientists, and executives to develop and grow intellectual property portfolios that protect and strengthen the client’s business. Our clients include Fortune 500 companies, global brands, family businesses, and start-ups from around the world.