So you have developed a new product that has a unique look or appearance. You now wish to keep others from copying your unique creation. A utility patent would allow you to protect the functional aspects of your new invention. If the functional aspects already exist (meaning you cannot claim them as your own), you may be able to protect the design or how the invention looks. The way to do this is with a design patent.
In this article, we discuss the costs associated with the design patent (attorney’s fees, patent search, filing and issuance fees, etc.,), and we do so by making certain you understand exactly what you’re paying for.
A design patent protects the aesthetic or ornamental features of a product or article of manufacture. It does not pertain to the usefulness or utility of the underlying invention. As such, you may be able to protect the appearance of the invention without needing to defend the uniqueness of the mechanical function. As with utility patents, to acquire design patent protection, you must file a patent application with United States Patent and Trademark Office (USPTO).
As is the case for all patent filings, you have 12 months to file your patent application after disclosing your invention or design to the public. This can be done by selling the product, introducing it at a tradeshow publishing the design publicly (such as in a trade magazine or posting the design elements on your website), or filing a provisional patent application (for utility patents only).
The USPTO will examine your design application to make certain that it meets the legal requirements. For example, the design must be attached to an article of manufacture and it must be novel and non-obvious in nature. Novel means that this design has not been previously patented or otherwise disclosed to the public through sale. Non-obvious designs are ones that are not commonly known or understood by individuals with particular skill or knowledge in the field of design.
Now that you know your options, it’s time to learn about the process for securing your patent. This article identifies the steps involved in acquiring design patent rights and the costs associated with each step. Knowing the upfront costs of filing a design patent can help in your determination of whether to file. It can also help you save money by understanding where it is most important to allocate your funds in the process. Of course, some of these steps may be avoided or carried out in alternative manners (such as doing it yourself) to save money but it’s best to work with a lawyer to ensure everything is carried out correctly. The wisdom of doing so is up for debate; but, it is relevant to understanding the total costs you can expect.
The costs for securing a design patent can be broken into several parts, as follows:
Researching Prior Design Patents
A major cost that might arise before filing the patent application is a patent search. You will need to determine whether someone already holds patent rights in your product design. This search is conducted differently than a utility patent search. The utility patent search is very complicated, as you need to try and identify any conflicting art from a variety of types of inventions. With a design patent, you are primarily looking for designs of the same types of invention. Of course, if your invention strongly resembles a related (but distinct) invention, then it may not be an issue. You can complete this step on your own for free with the help of several public databases, such as Google Patents, Espace, and Patentscope. Hiring a patent search firm to search for your design will cost anywhere from $300-1,000. A legal firm undertaking the search for you will likely charge between $500 – 1,000. This fee, however, is generally rolled into the entire cost of the design patent application.
Developing the Design Patent Drawings
The design patent relies heavily upon detailed drawings to demonstrate the unique characteristics of the design. You should not attempt to develop the design patent drawings yourself. You should consider hiring a professional designer to develop these drawings. They must be able to scale and adequately demonstrate the design elements to the satisfaction of the USPTO examiner. As such, you should hire a professional draftsman or designer to develop drawing or rendered images of the invention. Make certain to employ a draftsman who fully understands the requirements and specifications for patent drawings. Generally, the cost for patent drawings ranges from $500 – $1,000, depending upon the complexity of the drawings.
Preparing the Design Patent Application
Once you have conducted a thorough patent search and are confident that no conflicting designs exist, you will need to draft the design patent application. Luckily, if you are going to employ the services of a legal professional to assist you in filing the design patent, most patent lawyers include the price of conducting a thorough patent search in the total price of drafting and filing the design patent application documents. Generally, the total price for searching for designs and drafting the complete design application is between $1,500 and $5,000. The costs may vary this much for the same services depending upon the size and reputation of the firm employed. It is certainly true that some attorneys are more competent in their legal services than others. As such, I encourage you to be cautious when selecting a legal professional for help. Do not simply rely on the costs charged by the legal professional. This may be deceptive.
Filing the Patent Application with the USPTO
As previously stated, you must file the patent application with the USPTO. There are several fees applicable depending upon the stage of filing and purpose. The fees for filing a design patent application with the USPTO is split up based upon the size of the entity filing the application. A “large entity” is defined as any entity that does not qualify as a small entity. A “small entity” is a business is a person or entity with less than 500 employees or any nonprofit. A “micro-entity” is defined as meeting the small-entity requirements, plus the entity cannot be named in more than 4 other patent applications, and does not exceed a gross income limited posted at http://www.uspto.gov/patents/law/micro_entity.jsp.
The application filing fee is only the beginning of costs associated with a design patent.
The fees are broken down by large entity, small entity, and micro-entity.
Basic filing fee – Design
If the original design application is denied, the applicant will need to make file a continued prosecution application or CPA.
Basic filing fee – Design CPA
If a granted patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the patent holder can seek for re-issue of the patent pursuant to the original application with necessary corrections. The fee schedule is:
Basic filing fee – Reissue (Design CPA)
If, for some reason, the design application exceeds 50 pages, the fee schedule is increased as follows:
Design Application Size Fee – for each additional 50 sheets that exceeds 100 sheets
In addition to the Patent Application fee, the USPTO also charges a patent search fee, as follows:
Design Search Fee or
Design CPA Search Fee
Next, the USPTO charges a design patent examination fee as follows:
Design Examination Fee or
Design CPA Examination Fee
The examination process is generally long and drawn out. If you do not wish to wait, you can pay for expedited examination as follows:
Request for expedited examination of a design application
If you find yourself needing examining for re-issuance or continued prosecution in connection with resistance, the fee is as follows:
Reissue Examination Fee or
Reissue (Design CPA) Examination Fee
Once the design patent application is received, searched, and examined, the USPTO will make a decision on whether to grant patent rights. This often involves a back-and-forth between the USPTO and the applicant. If the patent is granted the USPTO with send a Notice of Allowance. At this point, you simply need to file the request for issuance of the patent and application fee. Note: You may need to make any minor additions (such as corrections to the drawings) required by the USPTO. The fee schedule for post-allowance issuance is as follows:
Design issue fee
There are various other specify-purpose fees applicable to filings with the USPTO. The fee schedule can be found at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule.
What is Included within the Design Patent Application
One factor that determines the costs charged by a legal professional for preparing a design patent application is what goes into the filing. Just as is the case with utility patents, some design patents are more complicated than others. A complicated design patent will require more time to prepare and the cost will likely be higher.
The primary components of a design patent include:
Description or Specification – The description gives a brief overview of what the design patent covers. It includes a Preamble, stating the 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. It will include a cross-reference to related applications (unless included in the application data sheet). If applicable, it will include a statement regarding federally sponsored research or development. It will include a description of the figure or figures of the drawing (discussed below). It will include a feature description of the drawn figure. Finally, it will include a single claim (discussed below).
Claim – The claim is nestled within the specification. It is a statement of the unique design elements of the covered design. The claim will normally make reference to the drawings showing the characteristic shapes, including length-width-height ratios, curvature, indentions, and distinct appearance.
Drawings – As previously discussed, the drawings are perhaps the most critical aspect to a successful design patent application. You will need to make certain that there is adequate detail in the drawings or renderings to demonstrate the claimed uniqueness of the design.
LawTrades Knows Design Patents
As you can tell from the above-referenced material, the process for searching, applying, prosecuting, and ultimately securing patent protection is rather complicated. This is not to say you cannot complete the process on your own. Many inventors successful navigate this process and secure patent rights in their invention. This approach, however, is not with risks.
The primary risk of undertaking the patent process alone concerns making a mistake that ultimately forfeits your ability to protect your invention. Most notably, failing to meet deadlines is the greatest culprit in this arena.
The next risk is not adequately protecting your rights to the extent possible. Most patents grant upon the claimed protections in the patent specification. A poorly drafted claim or specification could result in the issuance of patent rights that fail to adequately protect an invention against copy by competitors.
Lastly, the final risk relates to cost. As you can see, filing anything with the USPTO is very expensive. Making an error in the application process may lead to the need for additional filings and additional fees.
In summary, you should consider working with a knowledgeable legal professional when undertaking to secure design patent rights. The intellectual property attorneys at LawTrades are experts in all matters of patent law. We can provide you the timely guidance and services you need to secure your intellectual property rights.