Design registration is an essential step for businesses and individuals looking to protect their unique and innovative designs. In the United States, design registration is governed by the US Patent and Trademark Office (USPTO), which provides legal protection to the ornamental features of a product.
In this article, we’ll explore the design registration process in the US, the criteria for patentability, the requirements for the patent application and the design patent cost. You can find information on how to register a utility patent in our another article.
Contents
1. What can be patented as a design in the US?
2. What are the requirements for registering a design patent in the US?
3. The process of registering a design patent in the US
4. Design patent opposition process in the US
5. The design patent costs in the US
What can be patented as a design in the US?
A design patent is a type of legal protection granted to the ornamental design of a functional item, such as a piece of furniture, a computer icon, or a piece of jewelry. It protects the appearance, rather than the functionality, of an object, and prevents others from making, using, or selling a similar design without the owner’s permission.
A design patent typically lasts for 15 years from the date of grant, and it can be a useful tool for protecting the unique and identifiable appearance of a product.
The criteria for patentability are the following:
- Novelty – the set of essential features is not known in the world prior to the priority date or application date.
- Originality – the design must not be obvious to a person with average knowledge and skills in the relevant field of art.
Multiple variants of a single concept may be filed in one design application, so long as their appearance and shape are similar.
No legal protection is given to:
- design, characterized only by a utilitarian purpose;
- design patent drawings that could be considered offensive to any race, religion, sex, ethnic group, or nationality.
The novelty grace period allows for a 12-month window before the US filing date or priority date, during which the design can be disclosed without affecting patentability, if disclosed by the inventor or someone who obtained the information from the designer.
What are the requirements for registering a design patent in the US?
The applicant for the design patent can be any person or entity. There can be several authors and applicants.
Application should include the following:
- transmittal letter;
- application data sheet;
- design patent drawings or photographs (as a rule, the drawings should be made in black and white and contain 7 views: front and back views, top and bottom views, side views (right and left), perspective view. It is also possible to include a detailed view in magnification);
- executed oath or declaration (by the inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application);
- description, including:
- preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied;
- cross-reference to related applications;
- statement regarding federally sponsored research or development;
- description of the figure(s) of the drawing;
- feature description;
- a single claim;
- Information Disclosure Statement;
- priority document (if applicable).
In a design patent application, only one claim is allowed, which specifies the design that the applicant intends to patent with respect to the article it is embodied or applied to.
Conventional priority is 6 months. The priority document can be submitted at any time during registration of the design application, up to the date of payment of the issue fee. A priority document that is not in English must be translated into English and the translation submitted along with a copy of the original priority document.
The applicant must provide an Information Disclosure Statement (IDS) that includes any information that may be relevant to the determination of the design patent’s patentability. The applicant must continue to fulfill this duty until the patent is issued or the application is abandoned. Failure to intentionally submit an IDS may result in the design patent being declared unenforceable later on.
The process of registering a design patent in the US
Registration of a design application might take between 1-3 years. Working with an experienced design patent attorney can help ensure that your application is properly prepared and that you have the best chance of receiving patent protection for your design.
The first step in registering a design patent is to conduct a search to determine whether there are any existing patents that might prevent your design from being registered. This search can be conducted on the United States Patent and Trademark Office (USPTO) website or with the help of a design patent attorney.
Once you have determined that your design is eligible for patent protection, you need to prepare and file a design patent application with the USPTO. The application should include detailed drawings or photos of the design, along with a written description of the design and a single claim that defines the design in terms of the article in which it will be embodied or applied.
After filing the application, you need to wait for the USPTO to examine your application. This process can take several months to a few years, depending on the backlog of applications. At the stage of formal examination, the correctness of filling out the application, the availability of the necessary documents, and the payment of the fee are checked. The substantive examination entails checking for completeness of the drawing disclosure and a comparison of the claimed subject matter with the prior art.
If the USPTO finds any issues with your application, such as prior art or a lack of novelty, they will issue an office action that outlines the issues and gives you an opportunity to respond. You will need to work with your patent attorney to prepare a response that addresses the USPTO’s concerns.
If the USPTO determines that your design is eligible for patent protection, they will issue a Notice of Allowance. At this point, you will need to pay an issue fee and the patent will be granted.
Design patents have a term of 15 years from the date of grant. US design patents are not subject to maintenance fees or annuities.
Design patent opposition process in the US
Any person may file a protest against a pending design patent application before its publication. After filing a protest, the applicant is typically given a one-month period to respond, unless circumstances justify a longer period. Third parties may file a request for ex parte reexamination during the period of enforceability of a design patent.
If an applicant receives two rejections, they may appeal the decision of the primary examiner to the Patent Trial and Appeal Board by paying the appropriate fee for such an appeal. Similarly, a patent owner may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board after paying the appropriate fee.
The notice of appeal must be filed within the period for reply set in the last Office action, which is usually three months for design patent applications. However, the notice of appeal and appropriate fee may be filed within six months of the date of the Office action (such as a final rejection) from which the appeal was taken, provided that an appropriate petition and fee for an extension of time are submitted.
If an applicant or patent owner is not satisfied with the final decision of an appeal to the Patent Trial and Appeal Board, they may appeal the Board’s decision to the US Court of Appeals for the Federal Circuit. To do so, the notice of appeal must be filed with the Director of the USPTO within 63 days after the date of the final Board decision.
The design patent costs in the US
| Micro entity | Small entity | Other applicants | |
| Application/Reissue | $44/$64 | $88/$128 | $220/$320 |
| Expedited examination (if acceptable) | $320 | $640 | $1,600 |
| Search/Reissue search | $32/140 | $64/280 | $160/$700 |
| Examination/Reissue examination | $128/$464 | $256/$928 | $640/$2,320 |
| Issue and publication/ Reissue | $148/$240 | $296/$480 | $740/$1,200 |
| Notice of appeal from the examiner to the Patent Trial and Appeal Board | $210 | $420 | $840 |
| Request for an oral hearing before the Board in an appeal | $340 | $680 | $1,360 |
The design patent registration cost in the United States via the iPNOTE platform starts from as low as $700, which includes all government fees as well as document preparation. Find the best patent agent in the US on iPNOTE.
Final thoughts
Even though registering a design patent in the US is a complex process, it can provide valuable protection for your design and prevent others from copying or using it without your permission. It is advisable to work with an experienced patent attorney who can guide you through the process and ensure that your application meets all the necessary requirements.
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