They’re not as lowly as you might think.

By Kevin Prince

At our monthly inventor’s group meeting it became painfully clear that at least one patent attorney believes design patents are worthless. My response: So what.designpatent-georgelucas

A design patent protects the ornamental appearance of a physical product. A utility patent protects how the product works, or possibly the steps used to manufacture it. For example, automotive rims often are protected with design patents. You cannot get a utility patent on what is basically a wheel and therefore already in the public domain.

However, if your product has some unique aesthetic quality or feature, as opposed to being strictly functional, then you can likely obtain a design patent.

Design patents often receive a lot of flak, and not just because they are weak and easy to design around.  Invention-promotion companies frequently sell design-patent applications to unsuspecting inventors who do not understand that patents come in two basic flavors.

Because design patents are relatively easy and quick to prepare, inexpensive to file, and allow the inventor to legally say “Patent Pending,” invention-promotion companies tend to be the biggest advocates of design patents.  Everyone is happy, until the inventor ultimately learns that a design patent is weaker than a utility patent.

Yet under the right circumstances, inventors should consider filing a design patent. Nearly 90 percent of design-patent applications are allowed and about 85 percent of these don’t receive any type of U.S. Patent & Trademark Office rejection.

Utility patent applications are only issuing at the rate of about 40 percent, even after multiple office actions, and typically two to three years to obtain. But if you file a design patent, there’s a good chance that 12 to 18 months later it will actually issue and you will be able to stop competitors who are blatantly copying your invention.

While most product pirates will change your design somewhat to avoid infringement, a few lazy knock-off artists may actually use one of your products to make their mold, in which case you can pursue litigation.

Design patents are also more economical. They cost about one-fourth of what a utility patent costs to prepare, and the fees over the life of a design patent are about 14 percent of a utility patent. The average cost to get a design patent is about $1,700, compared to a utility patent’s average cost of $7,000. That’s $5,300 that may be better spent on marketing and distribution of the product – arguably the most difficult steps.

Perhaps the greatest benefit of a design patent is being able to print “patent pending” on your product. The magic words “patent pending” may not scare every would-be competitor, but they can open doors that would not otherwise be open.

Manufacturing partners, investors, customers and licensees will ask, “What’s your patent status?” If you can honestly answer “patent pending,” you may have more time to pitch the idea before being asked what type of patent has been applied for. Ultimately, it’s your job to close the deal and illustrate why your idea has merit regardless of the patent status.

Remember that design patents and utility patents are not mutually exclusive – you can have both types of patents for the same product. And they each protect different aspects of the invention. Both types of patents require that you file a year from publicly disclosing your idea or offering it for sale. You may decide, particularly if you have limited funds, to launch the product with a design patent application and then within the next 12 months follow it up with a utility patent application when it’s clear that the product sales will justify the expense.

Understand that if you publicly disclose the idea, you will lose your foreign patent rights for each type of patent you have not yet filed. If foreign patents do not interest you, or you aren’t  in a position to afford a foreign patent, then this is a low-cost play-it-by-ear approach.

I constantly advise clients that a patent is not the right to make or sell a product, but rather a right to stop others from doing so. If you cannot afford to enforce those rights, or if you end up with a weak utility patent (or none at all given the USPTO’s current mood), then you may have been just as well served with a design patent application, the benefits that come with the words “patent pending,” and the money that you didn’t have to pay your patent attorney.

So is a design patent worthless? You might think so if you’re only considering its enforceability. However, if you’re an inventor facing the daunting task of turning an idea into a revenue stream, a design-patent application may be a vital step along the path of opening the right doors and conveying the right marketing message.

Kevin Prince is an inventor, UC Berkeley engineer, co-founder and vice president of Inventor’s Forum and a registered patent agent with QuickPatents in San Juan Capistrano, Calif. Whew! He writes in defense of the much-maligned design patent in this issue.

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