Posted by Post Authored by Kenny Matuszewski
When you hear the word “design,” what is your first thought? For many people, designs are the intricate and ornate clothing found in high-end fashion shows. Others may think of graphic designers, creating the glossy, high-sheen advertisements found in a wide array of publications.
According to the Manual of Patent Examining Procedure (“MPEP”) and patent laws, designs consists of visual, ornamental characteristics embodied in or applied to an article of manufacture (“product”).[1] Notably, designs do not need to apply to the entire product.[2] For example, a design patent can be obtained for both a tank[3] and a front fender of a car.[4] As long as the component or complete object is visual and ornamental, then it is eligible for design patent protection.
It can be easy to confuse design patents with utility patents since they share three requirements for patentability in common: patentable subject matter, novelty, and non-obviousness. To clear this confusion, the chart below outlines the features and elements of both design and utility patents:
| Category | Utility Patent | Design Patent |
| The Scope of Protection for an Article of Manufacture | Way it works | Way it looks |
| Length of Protection | 20 years | 14 or 15 years[5] |
| Maintenance Fees Required? | Yes | No |
| Number of Claims | Up to 20, without additional fees | Only 1 |
| Other Requirements for Patentability | Utility | Originality |
As seen above, design patents offer limited protection. So, why would people obtain design patents? First, it is much less expensive to obtain a design patent than a utility patent. Second, design patents are more likely to be granted quickly. For example, from the years 2005-2009, 90% of design patents were granted by the USPTO.[6]
It also takes less time for a design patent to issue than a utility patent. Design patent applications generally receive a final office action or issue as a patent in 19 months. If an expedited examination is requested, this time period can shorten to 3-4 months. In other words, clients will not only be able to market their products as “patent pending” quickly, but also obtain and enforce their intellectual property in a short period of time.
For example, companies such as Nike have used their extensive portfolio of design patents to protect the designs of their shoes. Others in the technology industry protect GUIs and smartphone interfaces with design patents, such as Apple and Samsung.
Recently, the cannabis industry has begun using design patents to protect product designs associated with cannabis consumption.[7] Because it is still illegal to possess, purchase or sell marijuana under federal law, design patents allow businesses and individuals in the cannabis industry to obtain intellectual property protection for their products in a round-about manner.
While design patents seem similar to utility patents in many ways, it would be patently absurd to conflate the two. Design patents are another arrow in the quiver of intellectual property rights and should be strongly considered for unique designs.
This post is adapted from a presentation Kenny gave to the CBA YLS IP Committee on January 3, 2018. A link to the presentation can be found here. If you have any questions about this post or are interested in contributing an article to the @theBar blog, please contact Kenny at kenneth@rabilaw.com or message him on LinkedIn.
[1] MPEP § 1502.
[2] Samsung Electronics Co., Ltd., et al. v. Apple Inc., 137 S. Ct. 429 (2016) (“So understood, the term ‘article of manufacture’ is broad enough to encompass both a product sold to a consumer as well as a component of that product . . . . That a component may be integrated into a larger product, in other words, does not put it outside the category of articles of manufacture.”)
[3] U.S. Patent No. D712,786 (issued Sept. 9, 2014).
[4] U.S. Patent No. D584,667 (issued Jan. 13, 2009).
[5] 35 U.S.C. § 173 (2012) (“Patents issued from design applications filed on or after May 13, 2015 shall be granted for the term of fifteen years from the date of grant.”).
[6] Dennis Crouch, Design Patent Rejections, Patently-O (Jan. 19, 2010), https://patentlyo.com/patent/2010/01/design-patent-rejections.html.
[7] Lindsey Moore, Can it be Patented?, Marijuana Venture, https://www.marijuanaventure.com/can-it-be-patented/ (last visited Aug. 27, 2018).
About the Author:
Kenneth “Kenny” Matuszewski is an associate who concentrates his practice law in the area of intellectual property, with a particular emphasis on patent litigation. Mr. Matuszewski has extensive experience litigating patents in the software, electrical and mechanical arts in several federal courts and the PTAB. He also advises clients on design patent and trademark protection. Further, Mr. Matuszewski currently represents international technology companies, small businesses, individual inventors, novelists and artists. Click here to read Kenny’s full bio.