Many of you likely own trademark registrations, though your product may also be eligible for design patent protection as well.
What is a design patent?
While utility patents protect the way an item functions, design patents protect the way a product looks, including its shape.
For example, the special shape of Crocs footwear received design patent protection. If, for example, you have designed a bottle with an innovative and unique shape, it is possible that it can be registered as a design patent. If it has a unique opening mechanism, which includes an innovative technology that you have developed, utility patent protection may apply as well.
Should I apply for a design patent?
Registering a design patent gives you exclusivity over your special design, and allows you to prevent others from selling a product with the same shape. Amazon recognizes design patents and should help you enforce and prevent infringements of your product’s design.
The protection of a design patent is relatively limited, and the registration covers only the specific design of the product. It does not cover similar designs or the general concept.
Nonetheless, most investors and buyers in the industry see patents as a significant asset, and registering them will increase the value of your business. Although limited, a design patent allows enforcement against direct competitors who copied the exact design.
Therefore, if you are thinking about an exit, you should consider registering your design to increase the value of your business, even if you do not intend to enforce it yourself.
Is my product eligible for design patent protection?
You can register a design patent in the US only if there are no previous products marketed with the same design (“Prior Art”) and your product is sufficiently unique and innovative.
If you have been selling the product for a long time, you probably won’t be able to register a design patent for your product.
You can apply for a US patent registration only if the product was published less than a year from the date of filing the patent application.
That is, you have a grace period of one year in the US after you commence marketing and selling, by which time your patent application needs to be submitted.
How long does it take for a design patent to register in the US?
Patience is the key word. Registering a design patent in the US takes about 16-24 months, mostly due to a substantive examination of the patent carried out by the US Patent and Trademark Office (USPTO). You can shorten the registration period to about 8-12 months, by submitting a request to expedite the examination (for an additional fee).
And what about other countries (non-US)?
In non-us countries, there are different laws regarding the time of submission. For example, there is no grace period in China and many European countries, and the patent must be submitted before it is marketed.
Therefore, it is recommended to consult an expert before launching your product, in order to find the right strategy for your business.
So, if you have a product with a unique design and would like to increase the value of your business — you should consider applying for a design patent. We will be happy to help you decide if this is right for you.
