How to Prepare a Design Patent Application. Episode 23

Utility vs. Design Patents

So far, almost everything I’ve discussed has been about utility patents.

• The latest statistics I looked at showed that 92% of issued patents are utility patents.

• About 8% of issued patents are design patents.

• Only 0.3% of issued patents are plant patents.

Most inventors are interested in utility patents, but some of you might be considering design patents.

Sometimes design patents make big news. For example:

• In the Apple vs. Samsung case, Apple claimed that Samsung’s phone designs infringed on iPhone design patents.

• Apple files design patents because they know that the visual appeal of their products is a major selling point.

If the appearance of your product is what makes it marketable, you should consider filing a design patent.

It is possible to file both a design and utility patent for the same invention.

When to File a Design Patent vs. a Utility Patent

• Utility patents protect how an invention works.

• Design patents protect how an invention looks (the “ornamental features”).

Ornamental vs. Functional Features

• Ornamental features are non-functional visual aspects.

• Functional features relate to how the invention operates.

• There can be gray areas where it’s unclear whether a feature is functional or ornamental.

If the key feature of your invention is functionality, focus on a utility patent.

If the key feature is appearance, consider a design patent.

Limitations of Design Patents

• Design patents cover only the appearance of a product.

• If someone copies how your product works but changes its appearance, your design patent won’t cover it.

• Many infringers can easily “design around” a design patent by altering the visual appearance.

However, design patents are useful when:

• Someone is making an exact or near-exact counterfeit of your product.

• The design itself is a major selling point (e.g., fashion, furniture, electronics).

It is possible to win a design patent infringement case—as Apple did against Samsung—but it is more difficult than enforcing a utility patent.

Examples of When to File a Design Patent

• A new guitar shape: If you create a unique-looking guitar, but it functions like any other guitar, a design patent may be appropriate.

• A curvy lamp design: If the shape of the lamp has no functional impact, you may seek a design patent to protect its appearance.

Requirements for a Design Patent

Like utility patents, a design patent must be:

• New

• Non-obvious

• Original

If you believe your design meets these criteria, the next step is preparing drawings.

Importance of Drawings in a Design Patent

• Drawings are the key to a design patent.

• Unlike utility patents, where drawings are just examples of an invention, in design patents, the drawings define the invention itself.

• Messing up the drawings means messing up the invention—and it can be impossible to fix later.

I strongly recommend not preparing design patent drawings yourself.

• Patent attorneys work with professional patent draftsmen who know the exact rules and requirements.

Standard Views for Design Patent Drawings

A basic design patent typically includes seven views:

1. Top view

2. Bottom view

3. Left side view

4. Right side view

5. Front view

6. Rear view

7. Perspective view

If the left and right views are mirror images, you can state this in the description instead of including both drawings.

Additional views, like:

• Exploded views

• Usage views (showing the product in use)

…are sometimes included but are not required.

Example: Apple’s iPhone Design Patent (U.S. Design Patent No. 558756)

You can find this patent with a Google patent search.

• Figures 1 and 2: Two different perspective views (front and bottom).

• Figure 3: Front view.

• Figure 4: Rear view.

• Figure 5: Top view.

• Figure 6: Bottom view.

• Figures 7 and 8: Left and right side views.

Key Differences Between Utility and Design Patent Drawings

1. No Reference Numbers

• Utility patents use reference numbers to point to parts.

• Design patents do not, because you are claiming the entire design, not individual features.

2. Use of Broken Lines

• Solid lines represent claimed design elements.

• Broken lines indicate unclaimed features (e.g., screen, buttons).

• Example: In Apple’s patent, the screen, home button, and speaker are in broken lines, meaning they are not claimed.

This prevents competitors from avoiding infringement by making minor changes to non-essential elements.

Drawing Precision Is Critical

• Even a small mistake in the drawings can lead to rejection.

• Example:

• In one of my cases, the examiner noticed a line that was 31 degrees in one view but 32 degrees in another.

• This was flagged as an inconsistency.

Fixing drawing errors in design patents is difficult because:

• Amending the drawings = amending the invention.

• You cannot add new subject matter after filing.

• If errors exist, you may have to file a new application, which can be a major problem if you’ve already publicly disclosed or sold your product.

Other Formatting Rules for Design Patents

• Margins, page numbering, and figure numbering follow the same rules as utility patents.

• Shading and stippling can be used to show curved surfaces.

Writing the Design Patent Specification

The specification is very simple.

1. Description Section

• Simply list the figures and what they show.

• Example:

• Fig. 1 is a front perspective view of an electronic device in accordance with the present design.

• Fig. 2 is a rear perspective view of the electronic device.

• Fig. 3 is a front view of the electronic device.

2. Claim Section

• A design patent only has one claim.

• Standard format:

“We claim the ornamental design substantially as shown and described.”

Design Patent Term and Maintenance Fees

• Design patents last for 15 years from the date of grant.

• No maintenance fees are required (unlike utility patents, which require fees at 3.5, 7.5, and 11.5 years).

Final Thoughts

Design patents may look simple, but the complexity is in the drawings.

• If you already have a CAD file, you might find a patent draftsman to prepare drawings.

• However, I strongly recommend working with an attorney to avoid costly mistakes.

Need Help With Your Patent Application?

If you need help drafting your patent application, connect with me! I'm Adam Diament, and until next time—keep on inventing!