Design patents used to be considered the lowly step-sister of the standard utility patent. Things are changing, filings are going up and allowance rates for those filings are holding at a steady ~90 percent with more than 80 percent receiving no rejections prior to being granted by the United States Patent Office. Tellingly, much of the Apple-Samsung smartphone case, and the resulting billion dollar judgment (albeit subsequently reduced) hinged on design patents.
In the United States, design patents are granted to non-functional and/or ornamental designs embodied in, or applied to, all or a portion of an item. All design patents are limited to a single claim: “The ornamental design for X as shown”. With this limitation on claims, some products may be covered by many different design patents.
In addition to the single claim requirement, design patents also require a preamble (including a title, the names of the inventors and a brief description of the nature and use of the article associated with the design), any relevant cross referencing to other related applications, a statement indicating whether there was any federal funding for the innovation, a description of the figures, a feature description, and, of course, the figures (which may include photographs and color drawings under certain circumstances).
Like utility patents, design patents provide protection against infringers who incorporate substantially similar designs in their products. But, unlike standard utility patents, design patent applications are currently not published until granted. Once granted, they are given the designation D followed by a string of numbers.
Like utility patents, design patents must show novelty and non-obviousness over the prior art. However, in contrast to utility patents which defines novelty and non-obviousness with reference to a fictional person of ordinary skill in the art (PHOSITA), in design patents, the standard to which novelty and non obviousness are judged is “in the eyes of an ordinary observer“. Note that in determining novelty and non-obviousness for design patents, the prior art need not be restricted to items of similar function.
Design patents also tend to be prosecuted faster than utility patents. Prosecution of design patents on average last 15 months, (less than half as long as a typical utility patent). Expedited procedures are available cutting pendency down even further to around 8 months.
Designs can be protected by more than one intellectual property regime. Trademark and trade dress can potentially provide indefinite protection provided that the item is continually used in commerce. In contrast, design patents expire 14 years from issuance.
There will be some upcoming changes in design patent laws with the Obama administration, in signing into law the Patent Law Treaties Implementation Act of 2012. Under this act, the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs comes into force in the United States. Under this convention, a number of changes to the design patent regime will be going into affect on December 18, 2013. These include: (1) an extra year on the lifespan of design patents, i.e., 15 years and no maintenance fees; (2) a publication requirement for design patent applications, albeit with the ability to delay publication for up to 30 months; and, (3) PCT-like filing of an international design patent application.
