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By J.D. Houvener
Patent Attorney and Founder

Hey everyone, we’re here talking about how to file a design patent application. Hold on a second. Oh, sorry, I left my AirPod in. Did you know that AirPods are super popular? I think Apple sold over 900,000 in 2018 alone. But did you think that there’s both design and utility pad protection? We’d be right. So, AirPods are covered under at least one US design patent. Okay, the case together with the two AirPods under design D-801,314. There are 44 total patents that protect the Apple AirPods, including foreign patents.

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And what it means to put together an application or submittal to the patent office. I want to introduce both ideas – the Inventor’s Guide to Patents. I wrote this book just a year and a half ago, and I encourage anyone out there that’s interested in getting into the subject matter, maybe it’s just starting or kind of wants to refine and kind of take the dust off the knowledge you might have had in the years past. This is the book to start with, okay? It’s at 110 pages, easy read, not legal jargon. This cuts through all the major questions that almost every inventor has about what’s the major difference between eligibility, patentability, the difference between patents and Trade Secrets, all the good stuff. So please go to our website at boldip.com and pick up your free copy today.

So without further ado, I want to introduce myself. I’m J.D. Houvener. I’m a registered USPTO patent attorney, managing partner here and CEO of both Patton’s Law Firm. I’m here today to talk with you about design patterns and what it means to get your design filed and patented with the USPTO. So first and foremost with the overall idea of designs, I understand the major difference between design and utility. Design patterns protect just the ornamental way that something looks. Right back to our AirPods, you see how this is curved and shaped and it has fairly symmetrical edges. But the fact that it has this hinge and it moves seamlessly, that’s not covered under the design pad, just the fact that it looks like this. And then it has a hinge on the top and it’s proportionally sized so it’s on the upper portion and that this shape is sort of hemispherical. All those details about just the appearance, that’s what’s protected under design patterns. So, the shape is really the heart, the ornamental appearance of what your invention is, that’s what you’re going to be able to protect with a design pad.

And so what I want to do is walk with you a little bit about the essences of the application. Okay, what are the different parts of it? If you’re in a hurry and you can’t watch this whole video, I’ve set up some times in the table of contents format. If you need to jump to the section you want to hear more about, I want to mention first off, just like utility pens, one of the key things about design patents is measuring patentability, and you start by doing a novelty search. So with design patents, it’s a little bit harder to do keyword searching, whereas utilities, of course, you have all the functional aspects, the written description. There’s a whole lot more to work with in terms of what to search for. The design patent application or a potential app, all you have is the shape. Okay, it’s hard to search shapes. Now, with technology, we’re getting better and better, but it is essential to conduct a search to confirm that what you’ve created, this ornamental shape is actually new. So, do your own homework first and then hire a professional to get the search done right. Once we confirm there’s nothing else out there and that we don’t think it’s an obvious variant of another prior art that’s been filed, you’ve got it. You don’t have to obviously show utility because that’s not what you’re going to eventually be able to claim.

The next step is the application drafting. The preamp, the Preamble is called the Preamble, right? Just like the Constitution, it sets the stage. This is your title and describes who the inventor or ventures are. The title needs to be quite simple and again, it needs to describe the shape and the contour, the ornamentation. Those are the kinds of attributes you should be highlighting in the title. You shouldn’t be coloring it with any functional language, and you shouldn’t be embellishing the title. Keep it really short and sweet. A nice example for a title might be “Dual Earbud Compartment.” Something similar like that, that’s it, and move on. So Simple Story about how to make sure that your invention is not functional. Alright, and to decide whether or not to file a design versus a utility, there’s a Supreme Court case, Brandir, brand new. You can highlight that here. This case was all about a bike rack. You know you’ve probably seen bike racks that look like this all around town. This has sort of become the standard. It started out actually being a work of art, okay? This was a sculpture that this artist created. Now, it had sort of an industrial application, and it was awarded Industrial Design of the Year right way back when.

The interesting thing is that it is unprotectable under copyright law because of the nature that it is indeed extremely functional. So, there’s this interplay between functionality under design under utility patents and copyright. Okay, so there’s utility and copyright. You have sort of this boundary that as soon as something becomes functional, it belongs in the domain of utility. Same goes for your design, right? If you’re out there, you’re an artist, and you’re designing something, as soon as it becomes functional, it’s not going to be eligible for a design pad and application. You’re going to get rejected. What you’re going to be able to claim is merely the ornamental appearance. Okay, what it looks like, that back to that shape discussion we talked about before. What do those curves look like? What are the relationships and the proportions? That’s what’s protectable under design. So, in the application itself, you’re going to need to mention cross-references. The cross-references are really the other applications, the patent applications that you’re being able to stand on their shoulders, right? You’re using what’s been done before, whether it’s, you know, stringing your earbuds, the string, or you’re putting them together in some compartment, but it’s wired. Those are the references, right? And the actual shapes and designs that came before you. If you’ve got to give credence and give some credit to those inventors before you, that’s what the examiners will do. And they perform their search. They’re going to start with those references and the citations that you have.

The claim, right? So, we talked about in a separate video about, oh my gosh, all the hard work goes into writing a utility claim set. Design patents, it’s one line. I mean, I’m serious. It’s one line. It simply says the ornamental design as shown and described. That’s it. Everything about your invention lies on the drawings or photographs. In rare cases, so drawings in a design pack have additional requirements on top of those that are required at a utility level. The design patents must show all surfaces. Okay, and so if the surface has depth to it curvature, it must have proper shading and shading is huge in terms of design patterns. And so at on for my cars, we’ve got a dedicated patent drafter that works with our inventors and our patent attorney to make sure they capture that three-dimensional shape perfectly. So if you want to know more about this, I want to make sure you know that there is a Blog on our website at bold ip.com. Go look up and see how to file a design patent. I’ve got what I’m talking about here today in great detail. Okay, you go inquire there ask additional questions, comment, please give us a like on this video. It’s going to help us reach a really broad audience someday, and I’m so excited that you’re here and you’re a catalyst helping us pay it forward and serve an inventor to chase their visionary dream, make it come true. So, you’ve gone through, you’ve laid out the description, the claim, you’ve got the Preamble, the inventors are laid out, and now you’ve gone through and starting to draw out your drawings. So this is again the heart of the patent design patent is the drawing itself, the shading, the different angles, and the way you can view the patent in those drawings is also important. But you can’t miss this. This is the number one thing to get out of the drawings. Alright, if you’re going to think about one thing, focus on this – patent drawings.

Design patent drawings take a careful look. Some have a solid line and some have dashed line outlining parts of the invention. The parts that are in solid line, that is what’s being claimed. The parts of the drawing that are in dashed lines are not being claimed. Now is a very strategic approach to what features of that invention that are in dashed line and what are in solid light. So if you remember back to a different video talking about utility pads, we tend to want to claim a very essential core skeleton bare-bones most simplest version in our independent claims. The same approach applies, but we want to hit the inventor with the broadest rights possible. We want to build a only patent right only claim the core essence right that limited amount of disclosure. So that then they can get the rights for any additional bells and whistles that are added on it. So take a look at this design pattern. It’s just patented by app, alright. So you can see here some aspects are in solid line and some are in dash line. Yeah, that means for the area that’s in dashed, that shape could take on any shape, it could be that contour could totally change. But what’s not going to change and what this rights holder Apple doesn’t have the ability to change is what’s in solid line. That’s what’s being claimed in this design path. So I’m so happy to have been able to share this with you design patents are near and dear to me. One thing I want to make sure to mention is that many, many cases a utility pad application right it should also be filed, right. If you are an inventor and you’ve got a new product that has a beautiful shape and ornamentation to it you think that’s protectable don’t stop there if what it’s doing is providing valuable functionality let’s take a look and see if we can also lock down what your invention is doing in addition to the way it looks.

Alright and so design patterns aren’t any different we’re going to still need to gather all the formal documents to get them submitted to the patent office that’s going to include the cover sheet and oauthor declaration the drawings and the written description along with that claim we talked about so collecting all that information making sure that it’s all perfect USPTO fees are paid for that is all you need to get your patent pending last but not least you’re using the electronic filing system this is the last step working with your patent attorney and a paralegal if they have one to get everything filed electronically to save you some money that’s gonna be the way to go. So before I go I want to make sure you give us a like share this video and talk about in a comments below any additional questions you might have follow-up feedback on the video I’m always looking to improve last but not least I want to also give the opportunity to please read through my book bold ideas the inventor’s guide to patents this gives you all the essential nuggets about design patents utility patents and more it’s available for free via PDF download on our website at bold ip.com so it’s been great talking with you here today I’m your host JJ.D. Houvener, USPTO patent attorney and managing partner here at bold patents from all of us at bold 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 https://boldip.com/contact/