How to File a Design Patent

A design patent is a type of patent that protects the “ornamental” characteristics of a manufactured article or product. These characteristics might include the configuration, shape, and/or surface ornamentation applied to an article or product of manufacture. While the design must be novel and unique, a design patent protects your design and allows you to stop others from “making, using, offering for sale, or selling" your article or product design.

Design patents protect the article or product’s visual aesthetic — how it looks. In contrast to utility patents, design patents do not cover the inner workings of a product. Rather, the focus of a design patent is on the visually unique elements of the article or product.

In the US, patents are governed by the United States Patent and Trademark Office (USPTO). The USPTO describes design as such:

“A design consists of the visual ornamental characteristics embodied in or applied to, an article of manufacture.

Since a design manifests in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, the surface ornamentation applied to an article, or the combination of configuration and surface ornamentation.”

There are many types of articles and products to which you can obtain a design patent, but in general, patentable intellectual property must be new, useful, and capable of practical application. Here are some examples of the types of things on which a design can be patented:

Recommended: Read our Should Your Startup File for a Patent? guide to learn more about the different types of patents and whether your startup should file for a patent.

Patents are not good forever. At some point, your patent protection will come to an end. In the United States, the original design patent statute of 1842 stipulated that design patents were issued for seven years. This has been updated over the years, and design patents have been issued for 3.5 years, 7 years, and 14 years. In 2015, design patent laws were updated again to last for a term of 15 years from the date it is issued by the Patent Office.

So what is the difference between a design patent and a utility patent? In the simplest terms, a design patent protects the way something “looks,” and a utility patent protects the way something “works.”

According to the USPTO, a design patent is a type of patent that protects the “ornamental characteristics of a manufactured article or product,” while a utility patent protects “a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

A design patent is typically easier, quicker, and cheaper to get than a utility patent; however, the protections offered by a design patent are much more limited than those of a utility patent. For one, design patents may only have one claim — the ornamental design — for one intended usage. Utility patents, on the other hand, may have numerous claims on a process or how something works that may apply to multiple applications or uses.

For some inventions, you may be able to obtain both design and utility patents. If an invention’s utility and appearance are both novel and unique, to protect both aspects of your invention, you will need to apply for separate design and utility permits.

In most cases, you should apply for a design patent as soon as you make the decision to patent your design. There are several things to consider when deciding to apply for a design patent. You will need to determine: 

1. Whether the design is new, unique, and patentable
2. Whether it is worthwhile considering the time, complexity, and cost of the design patent application process
3. Whether your patent will be enforceable, and if will you’ll be able to enforce it

Once you have decided to file for a design patent, you should do so as soon as possible. In the US, a patent must be filed within one year of your first public use or disclosure of information or within one year of the first time you offer your invention for sale. Additionally, it often takes a year or more to receive approval from the USPTO and be able to enforce your patent. So once you determine that you are going to file for a design patent, you should get started on the process right away.

Here are some more helpful tips on if and when to apply for a design patent:

Consider Getting a Design Patent If:

• Your design can be patented
• You believe you will receive patent protection for your design
• You are worried someone else may patent a similar design or steal your design
• You don’t believe you can safeguard your design without a patent
• You are planning on taking on investors, or you need to increase the valuation of the company
• You can justify the costs of applying for a design patent (which can be $1,000-$5,000+)

Consider Foregoing a Patent If:

• You don’t believe you will receive patent protection
• You will not be able to enforce your patent
• You are not worried anyone is going to patent a similar design or steal your design
• You are not planning on taking on investors, or you do not need an immediate increase in the valuation of the company
• You cannot justify the costs of applying for and maintaining a patent

Consider Waiting to Get a Patent If:

• You believe you can safeguard your design
• You are not planning on taking on investors in the immediate future
• You cannot yet justify the costs

If you are going to file for a design patent, at some point in the process you will likely need to hire a patent attorney. Although you are not required to hire a patent attorney or a patent agent, the filing and response process can be complex. This can be especially true if this is your first time filing for a patent.

Many startups choose to use a patent lawyer to assist with the design patent process. A patent specialist can help determine if your IP is patentable, perform a patent research, draft and file the patent application, respond to patent examiners, and obtain and maintain your patent.

Recommended: The USPTO recommends retaining the services of a patent attorney or a patent agent to help navigate the patent process. Read our guide on How to Find a Startup Lawyer for more on finding the right patent attorney for your startup.

To apply for a design patent, you will need to file an application in the jurisdiction where you want to file for patent protection.

Here are the four steps you will need to take:

1. Perform a Patent Search
2. Fill Out the Patent Application
3. Submit Your Patent Application
4. Respond to USPTO

The first thing you should do when considering applying for a design patent is to conduct a patent search. In order to secure a design patent, your design must be non-obvious and novel. Therefore, you must conduct a patent search in order to determine if your design is in fact new or novel and that no other designs or art exist that might invalidate your claim. 

A patent search for design patents can be rather difficult. Most patent searches begin at the USPTO database or through Google’s patent database; however, when searching design patents, these databases have very few descriptive words. Thus, in most cases, a design patent search requires a manual search based on broad keywords.

However, your design patent search should not stop there. There are two things to keep in mind here: 

• Past design patent applications can prohibit you from acquiring a patent on your design
• Any other publications that have previously published a similar design can also demonstrate that your design is not unique enough to be considered non-obvious and novel

When researching your design patent, you should fan out to other types of publications — academic, journalistic, marketing, sales, trade magazine, even science fiction. If something resembling your design has been previously published anywhere, it has the power to thwart the patent office's efforts to accept the design as patentable.

Remember, patent examiners review patent applications every day. In most cases, the examiner will discover if there are any similar prior patent applications or references in publications or art.

If you do find similar patents, you may still be able to find aspects of your design that are new or novel. Therefore, you may still be able to patent the elements of your design that are truly new and innovative.

Recommended: While it is advisable to begin by conducting a patent search on your own, we recommend consulting with a patent lawyer to conduct a professional patent search as you prepare your patent application. Read our guide on How to Find a Startup Lawyer for more information on finding the right attorney for your startup.

After conducting a patent search, the next step is to prepare your design patent application and claim. 

Compared to other types of patent applications, design patent applications are rather straightforward. Design patent applications include:

• An introduction or Preamble
• Cross-references (which you’ve already found during your patent search)
• A claim
• Your drawings or photographs
• A brief description of your figures

We go into these in-depth in the Parts of a Design Patent Application section below.

In a design patent application, the figures are the most important part. In your figures, you will want to make sure that all of the features of your design can be seen clearly from multiple perspectives.

You will need to accurately portray all of the features of your design in black ink sketches from all perspectives (front, back, sides, top, and bottom). If you want to use color sketches (or images) you will need to file a petition explaining why you need to use color.

While many patent applications contain drawings, if you have a product or prototype then photographs are even better. Photographs can be used to capture and show elements in products or prototypes that can be difficult to capture in a drawing; however, they will also need to be in black-and-white.

Once all of your patent application materials have been prepared, you will need to submit your entire design patent application along with an Inventor’s Declaration and all required fees. You will not be able to add or change anything in your application once it has been filed, so make sure to review everything carefully.

To submit your patent application in the US you can file online, in person, or by mailing the application to the address below:

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Once your patent application has been submitted, a USPTO patent agent will review your application materials and respond to your application.

In most cases, you will need to work closely with your patent agent at the USPTO through the application process. The first correspondence you should receive after the USPTO receives your application is a notice that your application was received along with your application number, the filing date, and your examiner's name.

Once a patent agent examines your application, you will receive a determination as to whether your patent application is allowed and will be granted. If your patent is approved, your patent agent will explain the process of completing your application and receiving your patent.

However, in more cases than not, your patent application will be rejected upon your first submission. Your patent agent will explain why your application was rejected and usually include comments and suggestions on how to revise your application.

You will then need to revise or modify your application (or argue your merits) in order to appeal. Rejected applications usually have to be appealed and resubmitted within 30 days to six months, so you will not want to delay responding to the USPTO. You will need to resubmit your revised application and wait for it to be examined again.

Once your patent agent approves your design patent, they will provide you with the information you need for completing your application and receiving your patent.

If your design patent application is rejected a second time — also known as a final rejection — you may appeal the rejection once more to the Board of Patent Appeals and Inferences.

Recommended: A patent attorney makes navigating the patent application process much smoother. Read our guide on How to Find a Startup Lawyer for more on finding the right patent attorney for your startup.

We can break down the parts of a design patent application into six parts:

1. Preamble
2. Cross-References
3. Claim
4. Description of Figures
5. Drawings or Photographs
6. Inventor’s Declaration

Below is an in-depth look at each part, plus a sample design patent application.

A preamble (in a design patent application) serves as a formal introduction to the patent application containing a descriptive title, the inventor’s name, and the applicant's name if the inventor and the applicant are not the same.

A design’s title must clearly specify what exactly the design is based on. To be effective, a design title should reflect what others would perceive as the central elements of the design. If it looks like a hat with sunglasses, you should title it a hat with sunglasses, as you can see in the example preamble below from US Design Patent D547,531 titled “Hat with Sunglasses.”

In this case, the inventor and applicant are the same. If the inventor(s) invented this while working for a startup or established business, the company itself would be listed on the patent application as the applicant in most cases.

The next important part of a patent application is the “References Cited” or cross-references. A cross-reference is a reference to other patent applications that are similar or related to your design and patent application.

Cross-references are a required part of every design patent application. If any prior designs or art are similar or overlap with your idea, you will have to narrow your patent application to the aspects or elements of your design that are innovative and new. When there are more similar designs and citations, it usually means that you will have to narrow the scope of your patent.

As you can see in the example from the patent above, there are quite a few related patents for hats. This is no surprise as hats are a common, everyday object. In this application, 19 patents were cited, stretching back all the way to 1918. Notice that many of the cross-references were cited by the examiner. This would have happened during the review process and included in the application’s final revisions.

Unlike utility patents, design patents may only contain one claim, which is the original elements of the ornamental design and its intended use. 

The claim in the example above reads: “The ornamental design for a hat with sunglasses, as shown and described.”

During your patent search, you will likely find many of the claims read in a straightforward pattern just like this one.

However, claims must be for only one intended use. For instance, if you have created an artistic design and want to apply it to different uses — i.e. clothing, belts, and shoes, you would need to file a separate design patent for each.

A Description, or “Description of Figures,” is a description of the elements captured in the figures or photographs of your design. As you can see in the example, this entails a basic description of what the figures represent such as for Fig. 1, which is described as “a perspective view of the hat showing [the applicant’s] new design.”

The most important part of a design patent application are detailed drawings or, better yet, photographs. As you can see, the rest of a design patent is rather straightforward and lacks any specific details about your design. Rather, the extent of protection for your design patent is entirely established in your figures.

You will want to make sure that all of the features of your design can be seen clearly from multiple perspectives in your drawings and photographs.You will need to accurately portray all of the features of your design from each perspective (front, back, sides, top, and bottom). 

The USPTO has very specific guidelines for your drawings or photographs that you need to make sure to closely follow. Drawings must be down in black ink sketches. If you want to use color sketches (or images), you need to file a petition explaining why the use of color is necessary. 

In lieu of drawings, if you have a product or prototype of the actual article, then you may also use photographs. Photographs can often capture and show elements in designs that can be difficult to capture in a drawing; however, like the drawings, they will also need to be in black-and-white.

Finally, a patent application must include a declaration or oath by the inventor stating that the applicant is the original inventor or joint inventor of the design and that they (the inventor) authorized the patent application.

The USPTO provides a declaration applicants can use for their filing.

There are numerous advantages and disadvantages to applying for and maintaining patents, as with anything else. To decide whether your startup should apply for a patent, you must first understand the benefits and drawbacks.

Design patents can be useful tools for startups that want to protect their intellectual property. Applying for and being granted a design patent provides security that others won’t imitate and profit off of your invention. Here are some of the advantages of applying for and being granted a design patent: 

Design Patents Help Protect Your Original Designs

When you patent a design you are considered the legal owner of the intellectual property. If you are granted a design patent, no one else is permitted to use your design without your permission. When your IP is patent protected, competitors are not permitted to replicate any patent protected part of your design.

Design Patents Allow You to License Your Design to Others

In addition to “owning” your intellectual property, a design patent also provides you the ability to license your design to others or even sell the rights to the patent. Depending on the nature of your startup, licensing or selling the rights to a patent (or patents) can provide important infusions of cash or ongoing revenue streams. Thus, design patents or patent portfolios can make your startup extra attractive to investors.

Design Patents Help Attract Investors and Funding

Design patents can be valuable for startups, both in terms of the value of the startup as well as how attractive it is to investors. For one, design patents reduce risk by giving you the exclusive rights to your design. But not only that, as the owner of a patent you can also license or sell those rights, making a patent a value adding asset of the startup and in turn making your startup more attractive to and valuable to investors and venture capital. 

Design Patents Increase Legitimacy

In addition to the above, design patents also grant a certain amount of legitimacy. When a startup is granted a patent, it is made to seem more credible. Not only have you created something that has been vetted as new and unique, your startup also now controls a potentially valuable asset for the next 15 years. 

Importantly, design patents provide the same marketing advantages as utility applications. When you file a design patent, you can label your product as “patent pending,” and when you receive your patent, you can label it as “patented” lending legitimacy and credibility to your startup.

Although patents come with a number of advantages, there are also numerous drawbacks to applying for and maintaining a design patent. 

The Patent Process Is Complex

One of the major disadvantages of applying for a design patent is the complexity. In your patent application you need to show why your idea or invention is new and unique. This is not as easy as it sounds and will require research and likely a back and forth with patent examiners in order to make your case. Navigating the patent process can sometimes take years, requiring several stages of review, and your design may become obsolete or the market may change in the meantime.

Applying for a Design Patent Is Expensive 

A second major disadvantage of applying for a design patent is the cost. Patents require significant up front investment. The majority of the costs are usually associated with hiring a patent attorney. A good intellectual property lawyer may charge fees ranging anywhere from $500 to $1,000 an hour or more. 

There are also costs for the filing and review of your patent application with the USPTO. Filing fees range from $55 to $220 for Design Patents depending on the size of your startup. There are also a myriad of additional fees, such as a fee for a provisional patent, a fee to submit the application for review, and a fee when the patent is issued. 

You will need to account for all of these costs when deciding on whether filing for a patent is right for your startup.

You Must Disclose All Aspects of Your Design

Another big drawback of patents is that you must disclose all aspects of your idea or invention in your patent application, and if you are granted a patent, it is published in the public domain. 

Maintaining and Protecting Your Design Patent Is Ongoing and Difficult.

Once you are granted a patent, your startup is also responsible for monitoring and enforcing it. If someone else infringes on your design, it is up to you to follow the legal steps necessary to stop them. In many cases a letter, or letter from your attorney, informing them that they are infringing on your patent and demanding them to stop will do. 

However, there are many other cases where what is patented is under disagreement. A design patent only allows you to patent one aspect of your design. If what is protected is at disagreement, the patent holder is solely responsible for bringing a patent lawsuit to court to argue their case and be afforded protections.

Design Patents Only Apply in One Jurisdiction.

Another downfall of design patents is that they only apply in one jurisdiction. This means that you only have rights to your patented design and protection in the country or countries in which you filed and were granted a patent.

If you intend to sell your idea or invention and compete in other countries, you will need to patent your design in those jurisdictions as well.

• Should Your Startup File for a Patent?
• How to File a Utility Patent
• How to File a Provisional Patent