U.S. Design Patents: the Under Utilized and Overlooked Patent

By: Connie Pielech

U.S. design patents cover the ornamental design for an article of manufacture, namely, the way something looks.  Some examples include smartphones, shoewear, electronics, tires, and consumer goods.  The top organizations granted design patents in the last 10+ years include Samsung Electronics Co., Ltd., Nike, Inc., Sony Corporation, Microsoft Corporation, LG Electronics Inc., Proctor + Gamble Company, and Goodyear Tire + Rubber Company.

U.S. design patents may be filed in addition to utility patents, thus covering not only how the article operates but also any distinctive features, i.e., the surface ornamentation and/or the way the article is configured.  U.S. design patents have a term of 15 years from grant, no maintenance fees, and only 6 months for a priority claim. Design patents may be converted into utility patents, but it is recommended to use different figures for both due to the difference in the protection sought.

U.S. design patents are defined by the drawings in the patent, not a single feature of the claimed design. Thus, it is important to have a sufficient number of views which provide a complete disclosure of the appearance of the design.  Typically, the views include a perspective, front, rear, top, bottom, and sides.  Consistency is key among the views. Correction to the drawings after filing may be difficult as any changes to the drawings may introduce new matter.

U.S. design patents undergo substantive examination and must meet the same requirements as a utility patent, namely novelty and inventiveness.  As shown below, utility patents are still the majority of patents pursued in the United States.

Table 1

Year of Application or Grant Utility Patent Applications, All Origin Total Design Patent Applications Utility Patent Grants, All Origin Total Design Patent Grants
2015 589,410 39,097 298,407 25,986
2014 578,802 35,378 300,677 23,657
2013 571,612 36,034 277,835 23,468

U.S. design patent enforcement has been notable in the past few years, most especially in the Apple Inc. v. Samsung Electronics Co., Ltd. case.  The standard for infringement, dating back to 1871, was if “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same”.  This standard was modified in 2008 to have the ordinary observer test, conducted in light of the prior art. Design patents have typically been used for quick legal action because the pendency of the application is typically less than a year (from filing to grant).