From Prototype to Patent A Step-by-Step Guide to Registering Your Design with USPTO

Protecting a design is a crucial measure for businesses and individuals seeking to safeguard their distinctive and innovative designs. In the United States, the United States Patent and Trademark Office (USPTO) oversees design applications, offering legal protection for the ornamental aspects of a product.

What can be protected under a design patent ?

A design patent protects the ornamental design of functional items, such as furniture, computer icons, or jewelry, focusing on the appearance rather than the utility of the object. It prevents others from making, using, or selling a similar design without permission and typically remains valid for 15 years from the date it is granted. To qualify for a design patent, the design must meet specific criteria, it must be novel, meaning its essential features have not been disclosed anywhere in the world before the priority or application date, and it must be original, meaning it cannot be obvious to someone with ordinary knowledge in the relevant field. A single application can include multiple variations of a design, provided they share a consistent appearance and shape.

However, legal protection does not extend to designs that serve purely utilitarian purposes or to illustrations that could be considered offensive to any race, religion, gender, ethnicity, or nationality. Additionally, a 12-month grace period allows the inventor or authorized individuals to disclose the design before filing in the U.S. without affecting its patentability.

The procedure to file a design application

The process for design application in the United States typically takes between 1 to 3 years. The first step involves conducting a comprehensive search to identify any existing patents/art that might conflict with the application of your design. This search can be performed by a design patent attorney or it will be done by a IP based  service provider such as us.  IP-based service companies specialize in various fields to ensure thorough and detailed searches. They also maintain their own paid databases, which provide coverage of global design applications and non-patent literature.  Post the search done if it is confirmed that the design is eligible for patent protection, an application must be prepared and submitted to the USPTO. The application should include detailed drawings or photographs of the design, a written description, and a single claim defining the design as applied to the article it will embody. Working with an experienced design patent attorney can significantly enhance the quality of the application and increase the likelihood of a successful outcome.

After submission, the USPTO reviews the application in two phases: formal and substantive examination. The formal examination ensures the application is properly completed, all required documents are submitted, and the appropriate fees are paid. The substantive examination evaluates the adequacy of the design disclosure and assesses its novelty against prior art. If the USPTO identifies any issues, such as prior art conflicts or a lack of novelty, an Office Action will be issued, providing an opportunity to address these concerns. Once the USPTO determines the design is eligible for protection, a Notice of Allowance is issued, requiring payment of the issue fee for the patent to be granted. Design patents are valid for 15 years from the date of grant and do not require maintenance fees or annuities during their term.

Importance of the Design application

Filing a design patent for a product’s unique feature is often a strategic decision to protect its distinctive design. Businesses are encouraged to separate product patent applications to effectively safeguard specific features. Employing variations in design can also strengthen your position against competitors.

Design patents are more cost-effective to file than utility patents and have the added advantage of no ongoing maintenance fees. While utility patents take longer to obtain, design patents can remain valuable assets in your portfolio for an extended period.

Design Patent Application Requirements For USPTO Filing (USPTO guidelines)

To register a design patent in the United States, you must fulfil specific requirements and follow the procedures set by the United States Patent and Trademark Office (USPTO). Here’s an overview of the key requirements:

Subject Matter of a Design Patent
A design patent safeguards the ornamental design of a functional item. To be eligible:

  • The design must be novel and non-obvious.
  • It should be ornamental, not purely functional or utilitarian.
  • The design must be incorporated into or applied to an article of manufacture.

Eligibility Requirements

  • The design must not have been publicly disclosed, sold, or offered for sale more than one year prior to the U.S. filing date.
  • It cannot resemble an existing design or be obvious to someone skilled in the relevant field.

Application Components

  1. Specification:
  • Include the title of the design (e.g., “ornamental design for a chair”).
  • A description of the design is optional but may help clarify unique features.
  1. Drawings/Visual Representations:
  • High-quality, precise drawings are essential. These should depict the design from all necessary angles—perspective, front, rear, top, bottom, left, and right views.
  • Use solid lines to represent claimed design features and broken lines for unclaimed elements, such as environmental structures or context.
  1. Claims:
  • A single claim is required, typically formatted as: “The ornamental design for [the article], as shown and described.”
  1. Oath or Declaration:
  • The inventor(s) must sign an oath or declaration affirming their belief that they are the original creators of the design.
  1. Filing Fee:
  • Pay the applicable filing fee, which varies based on entity size (large, small, or micro).

Filing Process
Applications must be submitted electronically via the USPTO’s Electronic Filing System (EFS-Web) or the Patent Center. Once submitted, the USPTO reviews the application for legal compliance and conducts a prior art search.

Examination Procedure
The USPTO evaluates the application to ensure it meets statutory requirements. If objections or rejections are raised, applicants may need to amend their application or present arguments to address the issues.

Term of Protection
For applications filed on or after May 13, 2015, design patents are valid for 15 years from the date of grant, with no maintenance fees required.

Guidance for Success
Precision in drawings and clarity in claims are critical for a successful design patent application. Seeking guidance from a patent attorney or a professional service like Legal Advantage can significantly simplify the process and increase the likelihood of approval.

Example:
For example, the ‘Voda (Water) Package and Brand Identity Design‘ is shown with the actual product below. If they wish to file a US design patent, they should submit it in USPTO format. When converted into this format, it appears as shown in FIG. 2. The USPTO format includes all perspectives of the design, ensuring protection of all aspects of it. This is one of our team’s areas of expertise, where we focus on attention to detail to deliver exceptional results.

FIG. 1

Source: Voda (Water) – Package And Brand Identity :: Behance

FIG. 2

The application can be submitted at USPTO by following the guidelines (Legal Advantage’s End-to-End Product).

Many applications are often submitted without the level of refinement required, leading to rejections from the USPTO. To address this, Legal Advantage offers a comprehensive application drafting service that adheres strictly to USPTO guidelines. A recent example showcases our end-to-end process, enabling a client to achieve successful filing, demonstrating our capability to deliver complete, stand-alone solutions with precision.

FIG. 3 shows one of our sample products for the design example we have selected.

FIG. 3

The Role of Our Design Illustrators in USPTO Success
The exceptional outcomes we achieve are largely due to the expertise of our skilled design illustrators, who are instrumental in meeting USPTO standards. Their contributions include:

  • Producing precise, compliant illustrations that include all necessary views.
  • Highlighting critical design elements to ensure clarity and effective communication of the design.
  • Employing advanced tools and techniques to tackle even the most intricate design challenges.
  • Responding promptly to USPTO feedback and making necessary revisions in a timely manner.

This approach underscores the importance of collaboration, precision, and innovation in delivering results that consistently meet and exceed expectations.

Conclusion

In conclusion, design  protection through a design patent is an invaluable strategy for safeguarding the unique ornamental aspects of a product. By securing exclusive rights to innovative designs, creators can enhance brand recognition, deter imitation, and add significant value to their intellectual property portfolio. With cost-effective filing, no maintenance fees, and a straightforward application process, design patents offer robust protection for visual designs, fostering creativity and innovation across industries.

However, it is essential to understand that filing a design patent application is just the first step. Achieving a patent grant involves a rigorous examination process, including novelty and non-obviousness assessments, ensuring that only truly distinctive designs receive protection. This critical stage, involving prior art searches and detailed analysis, will be discussed in the next part of this series. Stay tuned for an in-depth exploration of the grant process and its implications for your design’s protection.

At Legal Advantage,  we specialize in providing comprehensive support for intellectual property matters, including design patents. Our expertise ensures that your design applications meet all USPTO requirements, from conducting thorough prior art searches to preparing precise drawings and descriptions. With a commitment to empowering innovation, we help businesses and creators protect their unique designs, fostering long-term growth and a competitive edge in the market. Let us guide you through the complexities of design application with precision and efficiency.