With the increase in the importance of patents across the world, design patents are the next stop destination for various multinational companies around the world. We have seen the series of engagements of Apple and Samsung in their patent war, across various courts in the world. A fact that remains on the paper is the reliance of Apple on design patent to prevail over Samsung. This gives the impetus for effective usage of design patents having a unique visual presentation to the products, and in this case, the industry should consider adding design protection to the patent portfolio. Let us understand the issue of design patents

Knowing the Design Patent

It is essential to understand what rights come up with the design patent and also what limitation it consists of. Well, the biggest limitation that comes up with it is not protecting invention as compared to the fact of utility patent protecting the same. The design will only protect the ornamental design of what is pictured. It focuses on the exterior and not the interior which means that the functional aspects are not protected. Design patent limits the protection since the design patent is all about drawings and the explicitly shown images issued in the design patents. If there is any such infringement, it needs to be done based on the ordinary observer. In case, there is an alternative visual presentation possible, chances are that the single design patent cannot protect each visual representation. Therefore, in the design patent, each such unique presentation must be covered. As specified, the design patents do not protect the functionality but only the visual representation, in case, for protection of the interior functioning, it is advisable that the patent application must be filed in conjunction with the design patent.

[Image Source: IPwatchdog.com]

Points for a filing design patent in the US

There are a lot of intricacies for filing design patents anywhere in the world but for our discussion, we will check few points for the design patent if filed in the US.

• In the US, the design patents although weaker, it gives the freedom to the applicant to use the term such as patent-pending or patent issued.
• Since the design patents are dependent upon the visual structure, the design patent application must not skip any such patent illustrations.
• The term for the newly filed design patent application is 15 years, and after the issuance of the design patent, there are no such financial obligations to be complied with. Like anywhere after the patent has been issued, there are maintenance fees that are necessary to keep the patent active. But there is no such financial obligation necessary for the design patents.
• The design patent applications only have a single claim, while when we talk about the utility application; it does consist of multiple claims.
• For a utility patent application, it is the prerogative of the side of the examiner to restrict between any such multiple and distinct inventions but this is mandatory in the design patent. Therefore, having more visual structure requires more patent application.  
• If you are filing the utility patent application, the foreign filing of the utility patent can be claimed up to 1 year for Paris Convention treaty signatory countries, while this period is 6 months for the design patent application.
• There is no such priority claim to a provisional patent application in design patent application, while in the utility it can be claimed up to 12 months.
• The design patent application does not consist of Request for Continued Examination (RCE) but the continued prosecution application (CPA) is available to the design applicant.

But certain figure shows that there are still very fewer companies and individuals seek for design patent protection. Few of the data taken from IPWatchdog and the US patent activity shows that in 2019, for example, there were 46,847 design patent applications filed, which represents 7.01% of the total number of patent applications filed in 2019. So, although design patents are being filed in larger numbers year after year (See Figure 1), as a percentage of the overall number of patent applications filed, they are largely staying within the 50-year historical norm (See Figure 2).

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back Global Patent Filing us at support@globalpatentfiling.com.