How to get a design patent – 9 step process

Design patents can be extremely valuable and are somewhat easier to get approved than their utility patent counterparts  In this post we will teach you how to get a design patent. 

Fun fact: in 2012 Apple won over $1B in a jury verdict over Samsung for iPhone design patents.   

1. Recap – Types of patents

Patents as you may remember are legal instruments that you can use to stop others from copying your idea.  My old school boss used to joke and say “a patent is just an expensive ticket to the courthouse”.  Thankfully that is not always true and there are many business and other reasons why a patent can offer value (even without going to court).  See our post on the business case for filing a patent

A utility patent  Have an idea for a new widget that sharpens pencils?  That is a perfect for a “utility” patent which protects how something works and operates, usually it does not matter what it looks like or how big or small it is.  These can be very broad patents.  

A design patent Have an idea for a new water bottle shape or a new pillow?  Those may be great as “design” patents because we are trying to protect they way they look, not how they operate. 

A plant patent Plant patents are only good if you created a new type of plant yourself in a greenhouse for example.   

2. Is your idea even patentable? 

There are three main criteria to determine if your idea will be approved as a patent. 

Newness called “Novelty”  You must be the first in the world to create your idea.  The invention must be new and not publicly disclosed prior to filing the patent application or in the United States you must not have made it public more than 12 months ago. 

Non-obviousness: Your invention should not be a routine combination or obvious to a person in your area of work.  Changing something from red to blue or making something smaller is likely an obvious change. 

Usefulness: Your invention must have a practical use and provide some form of benefit.  This is only a problem in certain areas like biotechnology.   

To assess the patentability of your invention, it is advisable to conduct a thorough patent search to uncover any prior art that may affect your ability to obtain a patent.

3. A Patent Search is a good idea:

Evaluating the patentability of your invention based on the search results is critical for making informed decisions regarding the patent filing process.  To start with we like to use a simple free Google search such as on google patents

4. Preparing the Design Patent Application

Preparing a design patent application is a lot easier than a utility patent.  The most important thing you need are good patent drawings (figures).   You should show all six sides of your invention (top, bottom, left, right, front, and back).  If budget allows also show an angled or perspective view.   Design patent drawings are tricky so we suggest hiring an expert “patent draftsman” to prepare these for you.   Typical cost is $40-$75 per page and we often need 5-7 pages.   In addition you will need a short (1-2 page) specification.   Feel free to contact us for a free design template.  

See the box in red below for an example of the text:

5. Filing the Design Patent Application: 

Once the patent application is prepared, it is time to file it with the appropriate patent office.  We have a free guide on filing with the US Patent Office for the provisional application but many of the steps are the same.  The filing process includes completing the necessary forms, paying the required fees, and submitting the application.

Common mistakes to avoid during the filing process include:

Missed deadlines: Failing to meet the filing deadlines can result in the loss of patent rights.

Insufficient disclosure: Failing to disclose all necessary details about the invention can weaken the patent application.  For design patents this usually means the drawings are not detailed enough or don’t show every viewing angle.  

Engaging a patent attorney or agent who is well-versed in the filing requirements can help navigate the complexities of the patent filing process and minimize the risk of making costly mistakes.  We would be honored to give you a free quote.

6. Patent Examination Process: Understanding the Steps from Filing to Grant or Rejection

After filing the patent application, it undergoes a thorough examination process by the patent office. The examination process typically involves the following steps:

Formalities Examination: Reviewing the application for compliance with formal requirements.

Substantive Examination: Evaluating the patentability of the invention based on prior art and patent laws.

Office Actions: The patent examiner may issue office actions requesting amendments, clarifications, or rejections.

Amendment and Response: Responding to office actions by making amendments or providing arguments to overcome rejections.

Grant or Rejection: If the examination process is successful, the patent will be granted. Otherwise, it may be rejected, and further options, such as appeals, can be pursued.

Understanding the patent examination process allows inventors and businesses to prepare for potential challenges and respond effectively to the patent office’s requirements.

7. Responding to Patent Office Actions: Strategizing Your Approach for a Successful Outcome

When patent office actions are issued, it is crucial to carefully review them and develop a strategic approach to respond. Some key strategies include:

Understanding the objections/rejections: Analyzing the reasons provided by the patent examiner to address them effectively.

Amendments: Modifying the patent application to overcome objections or broaden the scope of protection. Note that you cannot add any new matter (new images or text).  This is tricky with design patents and one of the reasons why having good figures made at the start is so important.  

Arguments and evidence: Presenting compelling arguments and supporting evidence to demonstrate the patentability of the invention.

Engaging a patent attorney: Seeking professional guidance from a patent attorney who can navigate the complexities of responding to office actions.

Calling the patent examiner:  The patent examiner is required to speak with you to explain their rejection.  This is often a great way to find common ground and get to a patent allowance. 

 

8. After Exam Process:

Following the examination process, there are several post-examination considerations, including:

Amendments: Making amendments to the patent application to address any remaining objections or enhance the scope of protection.

Appeals: If the patent application is rejected, the applicant can appeal the decision to a higher authority, such as a Patent Trial and Appeal Board.

Post-examination considerations require careful evaluation of the patent office’s feedback and decision-making strategies to maximize the chances of obtaining a granted patent.

9. Patent Grant and Maintenance: 

If the patent examination process is successful, the patent will be granted, and the inventor or business will receive an issued patent grant and it will publish online on places like Google.   Another perk of the design patent is that there are no more fees to pay like with utility patents.   Hooray!

 

Conclusion – How to get a design patent

Understanding the patent filing process is crucial for inventors and businesses seeking to protect their innovations. From determining patentability to filing the application, navigating the examination process, and maximizing the value of granted patents, each step plays a vital role in the successful acquisition and management of intellectual property rights.   

Design patents are a relatively low cost but effective tool to protect the look and/or shape of a new invention.  For some types of inventions they offer a perfect balance between good legal protection and low upfront cost.