Should You Get a Design Patent?

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By Rich Stim

Although design patents offer broad legal rights, they haven’t been widely accepted among all designers because of the time, expense and legal hurdles involved in the registration process. The application, drawings and filing fees can cost thousands of dollars depending on whether you use a patent attorney. In addition, your design must be new and not obvious to others in your field. Most importantly, your design patent is limited to the specific design. For example, if you obtain a design patent for an eagle- shaped belt buckle, you cannot stop others from creating original eagle-shaped belt buckles. You can only stop those that are substantially similar.

A design patent may be worth the effort and expense it if you have a new design that is a likely to be a perennial seller and likely to be copied by competitors. Keep in mind that like a copyright, a design patent is a weapon, not a shield; in order to use it, you must sue or threaten to sue anyone who trespasses on your rights.  You can do two things with a design patent:

  • Stop others who create substantially similar designs. For 14 years from the date your design patent is granted, you can stop anyone from making, using or selling your design or a substantially similar design on similar goods. In order to stop an infringer, you must file a lawsuit in federal court. You’ll have to show the court that an ordinary observer would be deceived into thinking that your item and the infringing item are the same. A design patent is interpreted through patent drawings that you file as part of your design patent application. These drawings define your rights and show the USPTO how the world will see your unique design. The design patent only protects what is disclosed in the drawings, so if you later change the design substantially, you can’t protect it unless you apply for a new patent.
  • License, sell or otherwise exploit your design. Besides chasing infringers, you can earn money by exploiting your design—for example, another company might pay you to license your design for a salt and pepper shaker. In this case, you would retain the patent and the company would acquire a limited right to use the design and would pay out periodic royalties. You can also sell all rights (“assign”) to the patent to a company in return for a lump sum or royalties.

How to Get a Design Patent

Design patent law protects a wide variety of designs—virtually any new ornamentation that’s intended for a useful object such as a table, hat, ring, belt buckle and so on. You are eligible for a design patent if your design is new and isn’t obvious to those in your field. (An example of an obvious design would be a birdhouse in the shape of a standard, A-frame house.) You must file your application within a year of its publication or first offer for sale. If your application is approved by the USPTO, you’ll become the proud owner of a design patent. If you don’t want to do it all yourself, you’ll have to pay between $2,500 to $5,000 for:

  • an attorney to draft the design patent application
  • a patent drafts person to create the drawings, and
  • the filing fee (approximately $220 – check the USPTO site for current fees), design search fee ($100), design examination fee ($140), and the design issue fee ($860).

It is possible to save money and prepare and file your own design patent. Unless you pay for expedited (speedy) processing of your application, a design patent takes 12 to 24 months to obtain, and you cannot use it to stop others from copying until the patent has been granted. Design patents automatically expire 14 years after they’re issued and cannot be renewed.

As the creator of the design patent, you will have the right to apply for the patent. The only exceptions are if you signed away your rights to someone else or you were employed to create the design. (For historical reasons, the USPTO often refers to the designer as the inventor, and refers to the design as the invention.)

If someone contributed to a new, nonobvious element of your design, they would be a co-inventor, and you should reach an agreement as to your ownership of the patent.  If you’re employed to create designs, your employer may own rights in any potential design patents. Ownership depends on the contents of your employment agreement, employment manual policies, whether you used your employer’s time and resources to create the design and state laws regarding employee ownership rights. Here’s more on patent ownership.

Other design patent articles that may help you:

Design Patent Basics

Preparing a Design Patent Application