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Design Patent Application

How to Prepare a Design Patent Application to Protect a Product’s Ornamental Design(s)

In working with a Miami Patent Attorney, it is often important for an inventor to realize that their idea may be protectable through a design patent application. A design patent application often serves as a viable alternative to the common (and often more popular) non-provisional utility patent application. Likewise, a design patent application may be utilized as an additional form of protection to a non-provisional utility patent filing. Section 171 of the Patent Act grants the ability to seek design patent protection for “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. 171.

Design patent applications are not included as part of the Patent Cooperation Treat (PCT) and as such the procedures followed for PCT international applications are not followed for design patent applications. Likewise, unlike with utility patent applications, which can seek priority to a provisional filing – there is no form of provisional design patent application.

To be the proper subject of a design patent filing, the underlying claimed subject matter must be for an article of manufacture – not the article itself. As such, protectable design includes visual characteristics embodied in or applied to an article of manufacture. This may include the article’s configuration or shape, surface ornamentation applied to the article, or combination thereof. The design attributes sought to be protected may be inseparable from the article – but cannot exist alone merely as a scheme of surface ornamentation. Moreover, it must be definite and capable of reproduction. See MPEP Section 1502.

The requirements of a design patent application, closely mirror (but are somewhat different) compared to a non-provisional utility patent application. That said, a subject of a design patent application qualify as proper subject matter under 35 U.S.C. 101.

Section 1.154 of the Code of Federal Regulations outlines the elements of a design patent application.  See 37 C.F.R. 1.154. In short, a design patent application must include a claim in a specific form, one or more drawings (in accordance with MPEP 1503.02), and a short specification. More specifically, to meet the requirements of Section 1.154 the application should include:

  1. a design application transmittal form;
  2. a fee transmittal form;
  3. a patent application data sheet (also known as an “ADS.”);
  4. a written specification;
  5. drawings or photographs;
  6. an executed oath or declaration in accordance with 37 C.F.R. 1.153(b).

The specification should include the following sections in this order:

  1. a preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied;
  2. cross-reference to related applications (unless provided in the ADS);
  3. statement regarding federally sponsored research or development (if applicable);
  4. description of the figure or figures of the drawing;
  5. a feature description; and
  6. a single claim.

Under 37 C.F.R. 1.153, the title of the design must designate the particular article – no other description (other than reference to the drawings) is required. The single claim should be in formal terms and directed to the ornamental design for the article (specifying the name) as shown and described in the drawings. More than one claim is not permitted.

Design patent applications offer many advantages. First, they are much more inexpensive to prepare and file. Second, they take less time to prepare by a registered patent attorney – and therefore can be filed quickly for purposes of obtaining a priority. Third, they take less time to issue (often within a year) – compared to several years as required by a utility patent application. Lastly, the filing fees are much less (typically about 50% less) than a utility patent application.

A design patent provides for 14 years (which begins on the issuance date).