Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

did you know that there is a right way and a wrong way to submit your design patent application hi I’m JD hoer owner and founder here in patent attorney at bold patent law firm today we’re going to go through the four-step simple process for how to file your design patent the right way step one pre-filing yeah there’s a lot of work that happens before you actually file your application first and foremost defining what your invention is so within this first step you’ve got to articulate and understand what your invention is and that you’re going to go for a design pattern versus a utility pattern let’s go through the basics of the differences between those two a design pattern covers just the way that something looks this is an article manufacturer something that can be built in three dimensions I’m think of this water bottle for example right it’s a huge threedimensional structure and it’s not the fact that it’s got a unique or functioning top or screw on it but it’s just the shape okay that design shape is what you’re protecting with a design pattern a Utility Patent protects functionality the fact that it keeps things cold that it has an ergonomic handle that moves and and swivels right it has a a fulcrum point and has additional force it can hold that’s utility pattern okay so those are the main differences between design and utility now still within this section one you need to do some research and this is patent searching to look over to see any other designs that have come before you if it’s been filed before or if this exact design has been out there being sold or talked about or published in the state-ofthe-art this is quite a process to go through and it’s difficult to search for pictures um when you when you perform a search on a search engine you do need to give it words right keywords phrases uh whatever the product is that you’re describing and then the the features right the elements the whether it’s a insert or a particular shape that you’ve discovered maybe it’s circular or has angles or polymetric whatever it is that you’ve decided on fat patenting those are the the keywords that you’ll be putting into your search results so once you’ve done that discernation whether you’re going to go out for a design or utility and having done the patent search you’re done with step one so step two filling out the design patent application paperwork hey this is a lot of heavy lifting and what goes into a filing is important I would say first and foremost the most important thing to put into the application is the drawings a design patent the claims what you’ll eventually say is yours as the inventor is going to be defined by the black letter the black lines that are drawn so you’ve got to make sure your three dimensions are articulated or put in two-dimensional shapes in as many figures as you need the angles whether it be a top view side view uh angled view right or even a section view are important because you want to make sure that the examiner is aware of all the different angles they able to basically put this from all the different 2D figures and see it in three dimensions you want to also put in the environment how this artical manufacturer will be used in the various environments or applications in the real world so that they’ll get an idea The Examiner will understand appreciate and even the End customer will appreciate um how it’s used so if we’ve created as a water bottle perhaps you’ll show a hand holding it right you’re not going to claim someone’s hand or how that the thumb wraps around but you’re going to show how that three-dimensional object fits in the hand of a user or let’s say you’re inventing a new steering wheel same type of thing you want to put how it is integrated to a car or how it’s attached to the steering steering column and maybe even the same with the hands showing how the hands grip on the steering wheel those are part of the environment and they won’t be in solid lines they’ll be in dash lines that’s the definition between what is claimed in solid versus what’s not claimed in dash lines take a look here below this is an example of a design pattern you can see in the drawings that they’ve got the environment in dash lines and what they’re claiming here in solid line there’s figures one figure here’s two and so on we can see different angles of what they’re claiming now along with these drawings with the patent application all the paperwork you’ll need to submit is a claim there is one claim and it’s almost always the same that’s an ornamental drawing right whatever it is you’re you’re claiming as shown and described that is the only claim the written claim that is there for design pad um there’s also a number of other documents including the application data sheet the oath where the inventor you know says definitively that they are the only inventor for this product that they did not derive it from anyone else uh and so on so forth there are also some additional forms related to entity size you can save money if you’re a Micro Entity or a small entity and you don’t have to pay as much as a larger company would to have the patent researched or examined by the USPTO all right step number three getting your hadn’t prosecuted so this is where the examiner will then take a look at what you’ve submitted all the application paperwork including the drawings and the claim and they’ll do their own search and decide whether your invention is truly novel now your threedimensional design submitted via the figures this is what the examiner will look at and they’ll do us the same or maybe even a better search uh than you would at when you did at the beginning in step one so hopefully you’ve done your diligence and there’s no surprises The Examiner doesn’t find anything new when they do their search so worst case scenario The Examiner does find something that you didn’t or looks at it differently and so they’ll offer what’s called a rejection they’ll say you know this these uh these CL this the drawings you’ve submitted this design has already been done before this is not unique there’s not it’s not novel over this specific reference prior art and they’ll provide the the number or a link to a website some way they’ll show that hey look your design isn’t new and here’s why you’ll either need to come back and say you know what I disagree with you examiner and here’s my legal argument as to why I think it is unique or you can change your drawings to make them substantially different from the prior art that they gave you so you can respond and that’s called an office action response there can be one two as many as 10 back and forth office action rejections and responses in order to get the office action granted there are fees and additional circumstances you may need to also petition perhaps even do an interview with the examiner to see exactly where they’re having issues and where you might be able to innovate Your Design to get around the prior art all right step four getting your design patent granted this is touchdown right this is the celebration moment where you now have a notice of allowance and you have granted rights on your design now it’s time to make sure that what you’re selling aligns with your design pattern and this is the most challenging part for a lot of inventors and business owners is making sure they put and get the most value from their patent portfolio is making sure that what they’re actually selling to the public matches what the design patent has so on top of that labeling is important making sure you put patented and put the design patent number you can see down below we’ve got a design pattern this is the cover sheet of what a granted design design pattern looks like and in the upper right hand corner you’ll see a d followed by usually six to seven digits this is the design patent number you know it’s a design patent because it has the letter D it’ll have a protection of 14 years from the date of Grant that’s the how long the patent is good for the great thing about design patents is you don’t have to pay any maintenance fees on the Utility side you have to pay to keep your patent enforcable at year three year 7 and year 11 design patents it’s good for 14 years you’ve already earned your spot it is now up to you to enforce your rights against any wouldbe infringers or those that might be trying to copy you so these are the four big steps in how to get and Protect Your Design patent application I’m JD hoer with bold patents wish you guys a great day go big go bold

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at