Apple’s 633,092 design patent, one of the patents at issue in the recent Apple v. Samsung, covers the ornamental design of an electronic device. The solid lines depict the claimed design, while the dashed and shade lines are for illustrative purposes only.
Apple’s 633,092 design patent, one of the patents at issue in the recent Apple v. Samsung, covers the ornamental design of an electronic device. The solid lines depict the claimed design, while the dashed and shade lines are for illustrative purposes only.

As your product design nears completion, it’s time to reconsider your intellectual property protection strategy. Many entrepreneurs seek patent protection for their products. Procuring a utility patent, however, which covers the way a product functions, can be expensive and time-consuming. In addition, patent law requires the inventor to demonstrate that his product is novel and non-obviousness when compared to related technology already in existence. This is a relatively high threshold.  Entrepreneurs also protect their inventions and products through other means, like trade secrets, trademark protection, or copyright protection. In addition, design patents are an often-underutilized form of protection. As the recent Apple v Samsung case shows, that may be changing.

In contrast to utility patents, design patents are meant to protect the ornamental appearance of a product rather than any functional aspect. Inventors have long overlooked design patents because they don’t cover the things that make an invention function. In fact, the U.S. Patent & Trademark Office issued ten times more utility patents in 2011 than design patents.  Design patents finally made headlines this past summer when the blockbuster Apple v. Samsung case returned a $1 billion verdict for Apple (since reduced to a still hefty $600 million). Samsung was found guilty of infringing four of Apple’s design patents and three of its utility patents. The design patents covered the ornamental aspects of iPhone’s admittedly minimalist look and feel, including the rounded corners seen on nearly every smartphone in the marketplace. Apple’s successful lawsuit has led many to view long-ignored design patents in a new light.

Of course, not every product is well-suited for a design patent. Such a patent is of little value to an entrepreneur if his competitors can easily change the appearance of their own similar products and still compete in the marketplace. Products with unique aesthetics, like unusual patterns or a different look, are often ideal for this type of protection. Design patents can relate to anything from the shape of the product to its configuration, or even its surface ornamentation. Under 35 U.S.C. § 171, a design need only be “original” to be patentable.

Entrepreneurs should consider design patents for the following additional reasons:

Greater Likelihood of Obtaining a Design Patent than a Utility Patent

It is often far easier to get a design patent than a utility patent. 30,467 design patent applications were filed in 2011. In that year, 21,356 design patents were granted. In contrast, over 500,000 utility patent applications were filed in 2011, though only 225,000 utility patents were issued.

Can be Obtained More Quickly and Less Expensively

Filing for a design patent is far less complicated than filing for a utility patent and may save an entrepreneur a great deal on attorney fees. A design patent application consists of a preamble, description of the drawing, feature description, one single claimed feature, and any drawings. PTO fees also run about half of the cost of filing for a utility patent. Design patents are valid for fourteen years from the date of issue, and require no maintenance fees after the date of issue. Finally, the most intriguing aspect of design patents is the speed with which they are examined by the U.S.P.T.O. Most issue within a year (as explained by Dennis Crouch on the Patently-O blog) as opposed to the three-years-and-counting wait for utility patents.

Unfortunately, as the popularity of design patents increase, examination speed decreases. As pointed out by Dennis Crouch, the backlog of applications has grown from by over 10,000 since 2009, while U.S.P.T.O resources allow for only 25,000 design patents to be examined each year. However, prosecution speed is still far faster for design patents than utility patents.

Can be Used with Other Forms of IP

Of course, utilizing design patent protection doesn’t mean that other forms of intellectual property protection are lost to you. You can get both design and utility patents if your product has both an inventive appearance and utility. Meanwhile, copyright may also be used to cover designs that can be separated from the functional aspects of a product. While copyrights last for far longer than design patents (the lifetime of the author plus seventy years), competitors can defend themselves from copyright infringement claims by demonstrating that they came up with the same expression independently. Finally, trademarks or trade dress can also help you protect your product as long as your design functions to identify to consumers the source of your product. It usually takes several years, however, to acquire consumer recognition, and thus trade dress protection, while a design patent is enforceable from its grant. As such, design patents remain a potentially useful alternate form of legal protection.