What are the specific requirements for a creation to receive design patent protection?

Design patents apply to "the visual ornamental characteristics embodied in, or applied to, an article of manufacture." So, the subject matter of a design patent application must be the ornamental characteristics applied to a physical item. More specifically, the design patent protects non-functional, purely form (shape or configuration) and aesthetic aspects of a patentable subject matter. The item must still meet the subject-matter requirements for a patent, as the design must be inseparable from the item to which it is attached. The design of the creation must also meet novelty and non-obviousness requirements. The design does not have to have utility (usefulness), as the protected creation is ornamental rather than functional in nature.

Next Article: Patentable Subject Matter - Utility Patent Back to: INTELLECTUAL PROPERTY

Filing Requirements for Design Patents

Patent law is federal law. To secure patent rights, a creator must file an application with the United States Patent and Trademark Office (USPTO). Below are the general steps you should take when applying for a design patent.

Eligibility - The design must be eligible for patent protection. The design patent must demonstrate that the design of an object is unique, it does not affect the function of the object, and it is inseparable from the object (it cannot be removed).

Patent Search - The creator should conduct a thorough patent search on the USPTO website to determine whether the design (or a confusingly similar design) already exists.

Patent Application - The patent application generally contains the following elements:

• Abstract or "Preamble." This is a general introduction to the design that is being patented.

• Title. This is the name assigned to the design by the creator.

• Description. This portion must thoroughly describe the design and all of its attributes. A thorough application will provide research to support the application.

• Claim. Unlike a utility patent, a design patent can only include one “claim”. The claim identifies the specific aspect of the design that is unique and subject to protection.

• Figures. It should include at least seven drawings or photographs (not both). The drawings or photographs should show all sides of the object design. One of the drawings/photographs should be a three-dimensional image. It should contain enough details to illustrate contours, spaces, etc. The non-claimed elements of the design should be identified via broken lines. You must use the appropriate petition if including colored renderings of photographs, as these will be considered part of the design. If you do not have the ability to draw or the equipment to render the design, you should consider paying a professional to undertake this service. The drawings are the most important part of the application.

• Figure Descriptions. Each drawing or photograph must be labeled and contain a description. The description should include any additional information so that a reviewer can fully understand the drawings.

• Oath or Declaration. This confirms that the creator is indeed entitled to the rights in the design.

• Application Data Sheet. This will primarily include information about the designer.

• Design Patent Application Transmittal - This is the information documents accompanying the main application. This form can be downloaded from the USPTO website.

• Transmittal Fee - The fee attributable to the design patent varies depending upon whether the filter is a large business, small business, or individual. The fees include design fee, patent search, and examination fee.

Prosecution - Upon receipt of the application, the USPTO will assign a filing date. From there, an examiner will conduct a search to make certain that design meets the eligibility requirements and is not already in use or already patented. You will work closely with the examiner to complete the process of securing patent rights. You have the opportunity during the process to argue your case. The patent examination process will take several months to multiple years — depending upon the complexity of the filing. The average time period is around one year. If the application is rejected, you have the options of requesting reconsideration, modifying the application, or appealing the examiner’s decision to the Board of Patent Appeals. If granted, the patent is published on the USPTO website.

The application can be filed through the web portal on the USPTO website. Otherwise, the filer can send the application via mail to the address indicated on the USPTO website.

Discussion: How do you feel about the ability to protect an ornamental design through patent? How are designs unique in nature from creations with function or utility? Are the objectives behind protecting these rights similar? How are they different?

Practice Question: Leni is a seamstress. She has been brainstorming some unique dresses for infants and young girls. She is scared to let anyone see her designs for fear that they will be copied. If Leni wants to commercialize her designs, what type of intellectual property protections should she pursue and what will she have to demonstrate to achieve that protection?