Design Patents Under Federal Law

The United States Patent and Trademark Office (USPTO) examines applications for design patents and grants these patents when appropriate. Design patent applications are not commonly filed. You can get a design patent under 35 U.S.C. § 171 for visual ornamental characteristics embodied in a manufactured item. The patent will only protect its appearance, not any structural or utilitarian features. However, both design and utility patents can be procured if both the utility and the ornamental appearance are patentable.

The application for a design patent can relate to the configuration or shape of a manufactured article, to its surface ornamentation, or to some combination of these. However, the design for surface ornamentation must be a definite pattern. It can be embodied in an entire article or just part of it.

Designs that are independent or distinct must be filed in separate design patent applications. Two different designs will be considered independent when there is not an apparent relationship between the two items to which the designs apply. A design is distinct from another design of a related object if it has different shapes and appearances. When a single design concept has multiple embodiments or modified forms, a single application may be filed for the design.

When a design is dictated mostly by the function of an object and lacks ornamentality, it is not proper statutory subject matter and cannot be patented. The relevant inquiry is whether there was a unique or distinctive shape or appearance to an object that is not dictated by the object’s function and purpose. The design must also be “original,” rather than a simulation of another well-known object or person. The subject matter of the design patent cannot be considered offensive to a race, religion, sex, ethnic group, or nationality.

How to Apply for a Design Patent

Your design patent application must include:

• A preamble with a brief description of the nature and use of the article in which a design is embodied;
• Cross-reference to other related applications;
• A statement about federally sponsored research;
• A description of the figures of the drawing;
• Description of the features;
• A single claim;
• Drawings or photographs; and
• An executed declaration.

There is no maintenance fee, but there is a filing fee, a search fee, and an examination fee. If you are an independent inventor or a small entity, the fees are halved.

While legal representation is not required, those who are not skilled in applying for patents may not be able to get a patent that adequately protects a particular design. The most important element of the design patent application is a drawing disclosure. The drawing disclosure illustrates the design with either a drawing or a black and white photograph of the claimed design.

In a utility application, the claim is a written description, but in a design patent application, the design is described by drawings or photographs that conform to the USPTO rules. An inaccurate or poorly prepared drawing can result in a defective application, and you may not be able to get a patent.

The disclosure is required to be clear, complete, and free of speculation. Drawings must be black ink on white paper or black and white photographs that meet requirements found in 37 CFR §1.84(b)(1) and §1.152. In some cases, color drawings or photographs will be accepted after a petition is granted under 37 CFR §1.84(a)(2), and the applicant explains why they are necessary. If color photographs are submitted, but the color is not part of the claimed design, you will need to add a disclaimer.

The photographs and drawings cannot be combined in the formal submission because of the potential of inconsistency. They should contain enough views, including front, rear, right and left sides, and top and bottom, to totally disclose the appearance of the design. They should also show surface shading that indicates contours, as well as open and solid areas of the design. If there is a lack of appropriate surface shading, the contour may be considered “non-enabling” under 35 U.S.C. § 112.

A structure that is not part of a claimed design but is necessary for showing the environment in which the design is used can be represented with broken lines in a drawing. For example, if the claim is only towards surface ornamentation, broken lines must be used to show the object. The broken lines should not intrude on the claimed design and cannot be heavier lines than the lines for the claimed design. A separate broken line figure should be used if the broken line obscures a clear understanding of the design.

Last reviewed October 2024