Starting The Patent Process with a Comprehensive Design Patent Application
In the previous post, Starting The Patent Process with a Detailed Provisional Patent Application, I noted that provisional patent applications are one way to start protecting your intellectual property. One caveat to note is that provisional patent applications cannot be converted into design patent applications.
Another form of protection an inventor should consider early in the patent process is whether design patent protection would be appropriate for any of its intellectual property. Design patents cover visual ornamental characteristics of an article of manufacture. For example, this could apply to the visual design of a product (or portion thereof) or mobile application user interfaces.
Note that a design application cannot claim the benefit of a provisional application, and there is only a six month grace period (not a year like with provisional and non-provisional utility applications) before a public disclosure will bar the filing of a design patent application.
However, like a provisional application they are relatively quick to get on file, as they primarily consist of drawings that can be prepared quickly from CAD drawings or pictures. Since the design patent cannot claim the benefit of a provisional application and has a shortened grace period, if an inventor has any IP that would be appropriate for design patent protection an inventor may also want to consider design protection at the same time as provisional patent protection, as well as soon after a commercial embodiment of the invention is finalized.
While the design patent is often considered to be “narrower” than a utility patent, if the design patent is infringed it can be more powerful than a utility patent. For example, in the Apple v. Samsung “patent war” much of the damages came down to a design patent. Design patent damages include the ability to obtain the infringer’s total profit from the article of manufacture, whereas utility patent damages are limited to a reasonable royalty or the patent owner’s lost profits (hard to prove).
The “Small Entity” filing, search, and examination fees for a design patent total about $480. There will be drawing fees of $30/sheet, and likely similar attorney time requirements as a provisional application. Expedited examination can be requested through the USPTO’s “Rocket Docket” program. There is the possibility of receiving an office action and having to respond as well, which may add cost. Upon receiving a notice of allowance, the issue fee is currently $350.
Just like with a non-provisional application, before the issuance of a design patent, inventors should consider whether to file a continuation. Inventors can continue to build a portfolio of design patents in a similar way as described above for non-provisional applications. The “claim” of a design patent is the solid line portion of the drawings. For example, if an inventor has a new product design, she could file a design patent with drawings that contain only solid lines. Once that is allowed, the inventor can try to obtain broader protection by filing a continuation with copies of the drawings that remove some of the solid lines. Mark Nowotarski wrote a series of articles for IPWatchdog titled "Strong Design Patents" describing how Apple accomplished this with its iPhone design and user interfaces:
Through design patent prosecution, Apple was able to obtain broad design protection for small components of its overall iPhone design. From this, it was able to obtain a very large damage award against one of its competitor while a majority of Apple's utility patents sat on the sidelines unable to be asserted.
