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 J.D. Houvener, owner and founder here, and 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 patent versus a utility patent. Let’s go through the basics of the differences between those two.
A design patent covers just the way that something looks. This is an article of manufacture, something that can be built in three dimensions. Think of this water bottle, for example. It’s a huge three-dimensional 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 patent. A utility patent protects functionality, the fact that it keeps things cold, that it has an ergonomic handle that moves and swivels, right? It has a fulcrum point and has additional force it can hold. That’s a utility patent. 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 of the art. This is quite a process to go through, and it’s difficult to search for pictures. When you perform a search on a search engine, you do need to give it words, right? Keywords, phrases, whatever the product is that you’re describing and then the features, right? The elements, whether it’s an 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 for patenting. Those are 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.
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, angled view, or even a section view, are important because you want to make sure that the examiner is aware of all the different angles. They’re 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 article of manufacture 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 how it’s used. So, if we’ve created it as a water bottle, perhaps you’ll show a hand holding it. You’re not going to claim someone’s hand or how 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 into a car or how it’s attached to the 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 patent. 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 figure one, figure two, and so on. We can see different angles of what they’re claiming. 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 claiming as shown and described, that is the only claim, the written claim that is there for design patent.
There are also a number of other documents, including the application data sheet, the oath where the inventor says definitively that they are the only inventor for this product, that they did not derive it from anyone else, and so on and 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.
Step Three: Getting Your Patent 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 three-dimensional design submitted via the figures, this is what the examiner will look at, and they’ll do the same or maybe even a better search than you would when you did it in step one. So, hopefully, you’ve done your diligence, and there are 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, these drawings you’ve submitted, this design has already been done before, this is not unique. It’s not novel over this specific reference prior art, and they’ll provide the number or a link to a website, somehow they’ll show that 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.
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 patent. This is the most challenging part for a lot of inventors and business owners, making sure they 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.
On top of that, labeling is important. Make sure you put “patented” and put the design patent number. You can see down below, we’ve got a design patent. This is the cover sheet of what a granted design patent 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 protection of 14 years from the date of grant. That’s 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 enforceable at year three, year seven, and year eleven. 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 would-be 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 J.D. Houvener with Bold Patents. Wish you guys a great day. Go big, go bold.