Listed below are the elements required when applying for a design patent. Click here for design patent legal standards.
Question: I create golf artwork using mainly golf tees and spikes. I have worked with some major golf equipment companies using their accessories. (They commissioned me for sculptures and other products.) Since I’ve been burned by several companies, should I get patents on my sculptures?
ANSWER: You already have a copyright on each golf sculpture. (You get it once you create the work.) But you will receive additional rights and benefits if you register your creations. The Copyright Office offers lots of helpful advice on sculptural works.
It’s possible that your creations may qualify for a design patent. Design patents are different than the patents we usually discuss (utility patents). In general, a design patent is strictly about appearances — that is, it’s granted for the ornamental or aesthetic elements of a device; a utility patent is about usefulness — that is, it’s granted because of what the invention accomplishes. In addition, a design patent lasts only 14 years from the date it’s issued; a utility patent is valid for 20 years from the date of filing. A big difference between copyrights and design patents is that in a design patent infringement case, you do not need to prove that the other party copied your work, only that the two works are substantially similar. Despite that, design patents have a reputation as being more difficult to enforce.
The major concern is that design patents are intended to protect ornamental designs for functional objects. (That’s why the largest design patent portfolios are owned by companies such as Nike, Reebok, Nokia, and Toshiba.) But what is a functional article? Is a sculpture functional? Traditionally, the USPTO has maintained that ornamentation and usefulness are two separate attributes. Despite that claim, the USPTO has granted design patents to kinetic sculpture under the theory that the parts of the sculpture that move — that is, the mobile aspects — qualify as a functional object. That’s the case even though common sense tells us that a purchaser is buying it purely because of its appearance.
Dear Rich: I want to protect my designed pendants in the USA. What should I do? And what cost per pendant design? And how long will it take? A design patent may take one year or more to issue (although half of the applications issue in less than a year). An applicant can speed things along — that is, obtain a design patent within two to six months — by filing a Request for Expedited Examination of a Design Patent and paying a hefty fee. Here’s an article about the expedited system. You can learn more about design patent strategy in this article and we explain the steps for preparing an application in this section of our site. You can learn current fees at the USPTO website.
Question: If I submit a design patent, am I allowed to mark my product as patent pending up until the product is either accepted or rejected?
Answer: Once you have filed a provisional, utility or design patent application with the U.S. Patent Office, you can mark your product as “Patent Pending.” False use of the marking — that is marking it when no application is pending — is prohibited. You can place the notice (or something similar such as “Pat. Pend.” or “Patent Applied For”) on the invention, the product package, marketing materials, at your website, or in similar locations.
Question: If I am filing a design patent electronically, how do I know ahead of time what the fees are? I am a micro so does that mean $190.00 ($45 + 30 + 115)? Is that correct or will I find out a different number after I have uploaded my application.
Answer: You can always calculate current micro-entity fees by using the USPTO fee schedule. And yes, your calculations are correct ($45 for basic filing fee, $30 for the search fee, and $115 for the examination fee).
Question: I was paid to design jewelry for someone’s wedding and now I’m afraid the client thinks she owns the design. I’d like to figure out how to best protect so it won’t get stolen. Should I get a design patent or a copyright?
Answer: First, check any written agreements you may have with the client (and yes, electronic agreements count) to be sure you haven’t assigned your rights in the design. If you’re unsure, review this article and this one, too.
Copyright or design patent? The rights you get with a design patent are considered to be broader or more powerful than a copyright. That’s because you don’t need to prove that an infringer saw your work and copied it — all that matters is that the two works are the same. But that advantage may prove more valuable for those designers who can afford to obtain the design patent (as well as to enforce it). The design patent application and filing process can take a year or more and cost one to two thousand dollars. A copyright is automatic — it exists once you create the work — and registration, which provides benefits if you need to chase someone, typically takes three to six months and costs approximately $50 to $65. Copyright will last for your life plus 70 years; a design patent lasts for 14 years. In addition, there are many rules for design patents that could disqualify it as an option for you. For example, if your design has been offered for sale or images of it have been published more than a year ago (referred to as the one-year rule), you cannot now file for a design patent. (Note these rules will change on March 16, 2013, when the U.S. moves to a first to file system.) Finally, not all art can be protected under copyright and not all designs are protected under design patent law. Copyright law does not protect functional designs; and the USPTO will not issue design patents for ‘surface ornamentation’ (that is, two-dimensional illustrations such as drawings). So, if you’re only decorating the surface of an object, you may not qualify.
Answer: A design patent may take one year or more to issue (although half of the applications issue in less than a year). An applicant can speed things along — that is, obtain a design patent within two to six months — by filing a Request for Expedited Examination of a Design Patent and paying a hefty fee. Here’s an article about the expedited system. You can learn more about design patent strategy in this article and we explain the steps for preparing an application in this section of our site. You can learn current fees at the USPTO website.
Question: What documents do I need to file a design patent online? Do I only need drawings and specification? Or do I need to upload the oath/declaration, too? Do I need the Application Data Sheet? Where can I find a template?
Answer: Templates and detailed instructions on preparing and filing design patents can be found at the USPTO website or at our section on preparing design patent applications. To file a design application via EFS-Web, you will need: (1) drawings in black-line format, (2) a specification, and (3) an oath/declaration (PTO/AIA/08). You don’t need the Design Patent Application Transmittal form (PTO/AIA/18) or the Fee Transmittal form (PTO/SB/17). You also don’t need the Application Data Sheet if you elect to complete that form electronically by choosing that option as shown below.