A design patent covers the appearance, aesthetic, or ornamental features of a product of manufacture. Securing a design patent requires filing with the United States Patent and Trademark Office (USPTO). To secure design patent rights, the applicant must demonstrate that the design is novel and non-obvious. This is generally done by a description and image of the design. The USPTO examiner will conduct a detailed search to determine if prior art exists that makes the claimed design not novel.
It is fairly difficult to conduct a thorough search for design patents. The reason is that the USPTO and other databases have very few words of description to use in searching patent databases. As such, it requires a more thorough manual search for any designs that would invalidate an application.
In this article, we discuss the steps you can take in searching databases for granted or previously petitioned design patents. We also discuss a few non-traditional resources for searching for prior art that could demonstrate a lack of novelty and thus invalidate a patent application.
Search Criteria When Searching a Patent Database
There are dozens of free and paid databases available for searching utility and design patents. Most of these databases allow for patent search based on a number of criteria. Some of the most common criteria are as follows:
- Key string – This is a keyword or word combination search. The words can be in the title or description of the product design.
- Assignee – Searching the assignee or holder of a patent (such as Microsoft or Samsung) is a great limiting criterion.
- Patent Classification – Using the relevant class-action for a patent can limit the field of search. For example, the Locarno Classification which is considered as the international classification for industrial design. The USPTO uses the U.S. Patent Classification (USPC) system for design patents.
- Inventor – If you believe that a particular inventor may have used a similar design in the past, you can limit your search to specific inventors.
- Citation – If you believe that a particular type of product is the genesis for many similar designs, you may limit the search by citations to a prior patent design.
- Date – Searching a date range can be very helpful. This is particularly true if a design would have been more popular or likely of use during a specified period in time.
- Understanding these criteria is a great starting point for searching for existing design patents. Remember, you will need to be organized in your search. Just searching for keywords or titles often yields poor results.
Conduct a Design Patent Search Through Databases
The USPTO and other international companies or organizations provide databases to search for patent filings. Most of these databases focus on utility patents. But, most of them can also be used to search for design patents or prior art that would demonstrate the lack of novelty in a new application. The following are some of the databases that can be used to search for prior designs:
- USPTO Database – The USPTO database allows for a search of all granted and petitioned patents. The search criteria allows for searching granted patents since 1976 (‘PatFt: Patents) or patent applications (‘AppFt: Applications’) since March 2001. The primary search methods are through keyword, name, and classification.
- WIPO’s Global Design Database – This database allows you to search among industrial designs recorded throughout the world. This allows for search by keyword, date, classification, and various other criteria.
- Foreign Country Databases – European Patent Office (EPO) provides a network of Europe’s patent databases. The Japan Patent Office (JPO) provides access to machine translations of Japanese patents. The Korean Intellectual Property Rights Information Service provides access to patent applications filed in country. The State Intellectual Property Office (SIPO) of the People’s Republic of China provides access to machine translation of Chinese patents. Other International Intellectual Property Offices that provide searchable patent databases include: Australia , Canada , Denmark , Finland , France , Germany , Great Britain , India , Israel , Netherlands , Norway , Sweden , Switzerland and Taiwan .
- Private Databases – Numerous companies provide very useful databases for searching US and World patent filings. These include Espacenet with DepatisNet, Freepatentsonline, and Google Patent. All of these are very comprehensive and useful databases for search.
Non-Traditional Places to Search for Designs
As previously discussed, searching and identifying prior design patent applications is difficult. It requires lots of trial and error to identify appropriate search terms. Even if your searches come back empty, it does not mean that there is no prior art that would disqualify a patent application. Here are some other methods that could reveal the existence of prior art.
E-Commerce Websites – Searching for items that have similar designs on e-commerce sites, such as Amazon.com or Ebay.com, can identify product designs that will invalidate a patent application.
Product review websites – The internet is fully of websites where individuals review products. Conducting thorough searches of these types of websites can produce all sorts of designs that may not be present in patent databases. The best practice is to search for products in a particular field or function.
CrowdFunding Websites – Crowdfunding sites contain a directory of products that may have never made it to larger commercial website or store shelves. They can often result in uncovering products with designs that conflict with a present application. The most popular sites are KickStarter and IndieGogo.
Prototypes – Companies will often prototype a product in various forms before finalizing a design. Simply drafting design documents for a prototype and disclosing them publicly can have the effect of invalidating an application for protection of a similar design. Searching prototypes. This will generally be done on inventor or company websites.
Prior Product Versions – If you believe that a particular type of class of product may have prior art that conflicts with your design, you can research the development history of that particular product. This includes searching for prior models or designs for the product. This will generally be done on inventor or company websites.
Manufacturer Websites – Searching the websites for manufacturers (particularly overseas manufacturers that have a catalog of product designs) can reveal similar designs that may invalidate a patent application for lack of novelty.
Conducting a thorough patent search is a very difficult undertaking. If you decide to conduct a search yourself, it is important to have a plan and understand the process. The legal professionals at LawTrades are experts in all matters of intellectual property law. We can provide you with the advice and services necessary to search and file for protection of your intellectual property rights.