Easier, Faster & Cheaper
Design patents are generally faster and cheaper to procure than utility patents. Design patents also have a significantly higher allowance rate than utility patents, with most US design applications allowed without any substantive prior art rejections. The USPTO reported an allowance rate of 90% for design patent applications in fiscal years 2005 to 2009.
These statistics beg the question: Why doesn’t everyone file design patents, instead of or in addition to, utility patents? My humble opinion is that the answer relates to the limited scope of protection provided by design patents. Nonetheless, design patents can constitute a valuable part of a well rounded IP portfolio.
Initial Filing Costs
As is generally the case with patent attorney’s fees, the rates depend upon the attorney/firm. My firm charges a flat $700 attorney’s fee for preparing and filing a US design patent application. Our initial filing fee includes a priority claim, if applicable, to a foreign priority application. In addition to attorney’s fees, the USPTO filing fee for a design applications is $380 for a small entity and $760 for a large entity. Furthermore, engaging an experienced patent illustrator to draw design figures that conform to strict USPTO design drawing rules will cost between $250 to $750 for a set of drawings.
So, the initial filing of a US design patent application may range from roughly $1,400 to $1,800, not including the filing of any patent assignments or Information Disclosure Statements (IDS).
Additional Prosecution Costs
If ownership of the application is to be transferred from the inventor(s) to a company, a patent assignment should be drafted for the inventor(s) to sign. The executed assignment should then be recorded with the USPTO.
If the applicant is aware of any relevant prior art (e.g., prior art references resulting from patentability search, related utility application, related foreign applications), then an IDS should be filed to disclose the known prior art to the USPTO.
Design Office Actions
Office Actions in US design applications are less common. Office Actions generally fall under two categories: non-substantive and substantive. Non-substantive Office Actions do not contain rejections based on the prior art, but may contain, for example, objections to the drawings. The vast majority of design Office Actions are non-substantive. Therefore, responses to non-substantive Office Actions are generally easier to prepare and less expensive (e.g., our firm charges $500 or less to respond to a non-substantive Office Action).
Other typical Office Actions in design applications may include a Restriction Requirement if the initial disclosure contained multiple embodiments. For example, if the originally filed application showed two versions of a product, the patent examiner may require you to pick only one version to prosecute in the pending application. In this situation, the applicant may file a continuation application to pursue the non-elected version/embodiment. Such a child application will maintain the priority date of the pending parent application.
In rare cases, a US design application may receive a substantive Office Action rejecting the claimed design on the basis of prior art. Responses to substantive Office Actions require substantially more effort and cost.
If the examiner approves of your design application, a Notice of Allowance will be issued setting forth a 3-month deadline for paying the issue fee. Our firm charges a flat rate of $500 while the USPTO issue fee for a small entity is $280.
Unlike utility applications which bear a high degree of uncertainty, most design applications will be allowed. The high certainty of design applications enables more accurate estimates of entire prosecution costs from start to finish. Assuming no substantive Office Actions, the total costs of a design application from start to finish will cost approximately $2,000 to $3,000.
Design Patent Drawing Guarantee
Our firm guarantees the quality of our selected illustrators. If our clients receive an Office Action objecting to the drawings, we will file a response with corrected drawings free of charge. This may be especially helpful if the client is unsure about using their own drawings or the drawings previously filed in a foreign application (e.g., China) which may not conform to US standards.