Why File a Design Application?

February 22, 2022

Trevor Day

Design applications may be a cost effective way to protect a commercialized product from competitors, or supplement other coverage of a utility application. In commercialized products, the design and appearance of a product can critically impact market acceptance and success. An eye-catching appearance and the look and feel of the product may warrant protection in a design patent separate from the function of the product itself.

One key benefit of a design patent is its applicability to any new design, even if the underlying product and function is old. As an example, a new version of an existing product that may come as a part of a product refresh may be protectable by a design patent. So, if the new design has market appeal, protection of that new design and excluding copycats may be valuable, even if utility patent coverage is unavailable. To the extent that you are investing in a new design for a product, that investment can be secured and protected with a design patent.

Arguably one of the greatest benefits of a design patent is knock-off protection. In the current market of e-commerce dominance, knockoffs are commonplace. A competitor or knockoff artist may want to sell an item that looks just like your company’s product, taking advantage of the design that distinguishes your product in the marketplace. For over-the-counter consumable products, such as pens for example, a customer may not take the time to discern the genuine product from an imitator’s product and may mistakenly purchase the wrong one. The risk for these types of consumer products is no more apparent than when visiting major e-commerce platforms where multiple versions of seemingly the exact same design are offered by competing sellers on the same page. If confusingly similar products do not have a technical feature covered in a utility patent, there may be no recourse available from a utility patent perspective. However, to the extent the design is covered in a design patent, there may still be design patent infringement.

Design patents also have the benefit of providing protection more quickly than utility patents. It is common to wait two or more years before the US Patent and Trademark Office (USPTO) will even review a utility application, whereas design applications are typically examined much more quickly. Indeed, design patents generally receive a first review within a year. In fact, some design patents may even issue within a year. Accordingly, when a product is entering the marketplace quickly and time is of the essence, design patent protection may be more quickly achieved than utility patent coverage.

Another benefit of design patent protection is the low cost. A design patent typically costs much less to prepare and prosecute at the USPTO than a utility patent. Unlike utility patents, which require a long and detailed description, design patents consist primarily of figures showing various views of the product. Where 3D design figures or manufacturing drawings are already available, a patent draftsperson may prepare the figures and minimal time is required from an attorney to review the figures and complete the application. In contrast, utility applications generally require much more time and expense to prepare on the part of the attorney. Cost savings may also be realized during prosecution of a design application at the USPTO, where design applications are on average allowed much faster and with less back and forth between an attorney and the USPTO. All of these factors mean that on average a design patent protection will cost much less to pursue than utility patent protection.

Design patents also provide stronger remedies for infringement than those offered for utility patent infringement. For example, a prevailing design patent plaintiff can recover all of an infringer’s profits for selling the offending design. In contrast, a utility patent owner may only recover a reasonable royalty, or, in certain circumstances, its own lost profits. Importantly, unlike a design patent owner, a utility patent owner cannot recover the profits of the infringer. Therefore, in instances of alleged design patent infringement, the alleged infringer may be motivated to settle quickly.

Finally, design patents provide advantages over trade dress rights, which also provide protection for the look and feel of a product and its packaging. However, a key difference between the protection provided by a design patent and that covered by trade dress is that a granted design patent inherently provides protection, whereas to assert trade dress protection, a plaintiff must prove that the product has obtained “secondary meaning” or “acquired distinctiveness” in the marketplace. In other words, to assert trade dress rights one must show that the public has come to associate the product design’s trade dress with a particular producer of the goods. Although trade dress is valuable protection, it typically takes several years and considerable advertising before the secondary meaning of acquired distinctiveness can be established. As a result, trade dress may be unavailable for the first few years of a product launch, potentially providing room for copycats to operate. Design patents are typically granted well before the trade dress standard is met, allowing a design patent owner to deal immediately with infringers.

Design patents provide numerous benefits to a patent owner, including quick time to grant, cost efficiency, enhanced damages, and advantages over trade dress. Where appearance is important to a product, design patent protection is a great avenue to protect that product in a timely and cost-efficient manner.