What is the design patent application process?
The examination process (aka “prosecution”) for a US design patent application comprises three main stages:
- initial filing;
- Office Actions (if any); and
How to file a US design patent application
The initial filing a design patent application with the USPTO is fairly straightforward. The two primary components of a design patent application are:
- design patent drawings; and
- a written specification.
Other formal documents are also required (e.g., inventor declaration, Information Disclosure Statement, Application Data Sheet, etc.), but the specification and drawings are the two main components of the application that warrant the most attention.
What are design patent drawings?
The drawings in a design patent application typically comprise black-and-white line drawings showing the ornamental appearance of a three-dimensional structure or a two-dimensional graphic or artwork. It’s best to have these drawings drafted by a professional patent illustrator so that the proper views and shading are provided. I generally believe in filing a patent application right from the very beginning even if it costs a bit more which will avoid delay and costs down the road.
With certain exceptions, design patent drawings generally must show the following views: front, rear, left, right, top and bottom. Any views that are identical to or a mirror image of a prior view can be omitted as long as a statement is provided in the written specification to specify this. Certain views may also be omitted for special products that have virtually no thickness. A flat bottom without any ornamentation may be omitted provided a statement describing this fact is included in the specification.
The USPTO has strict rules regarding design drawings (e.g., surface shading) that will be required in most cases. The USPTO also allows the use of broken lines (dashed lines) to show the context of a design without claiming it.
When reviewing a draft of design drawings, pay particular attention to any special features that may be missing or requiring edits.
What is the design written specification?
The written specification of a US design patent application should identify the inventors, specify the view of each figure and include a single claim. Any special statements (e.g., broken lines) should also be included. Applicants should pay particular attention to the description of the drawings to make sure that each view is properly identified in the specification (e.g., check if a description mistakenly identifies the “right” side when it should identify the left).
What are the chances of success in applying for a US design patent?
US design patent applications enjoy a high rate of allowance that is approximately 85% (at the time of this post). The high likelihood of granting a design patent makes the design application process more predictable. With greater certainty comes more precise estimates of the cost of the entire process from start to finish.
In contrast, utility patent applications are highly unpredictable since they incur a much higher rate of Office Action rejections. While it is common to have utility patent applications rejected over the prior art, prior art rejections are quite uncommon in design applications (although they do occur from time to time).
How much does a design patent cost?
Initial filing cost of a design patent application
The initial filing cost of a US design patent application mainly consists of three components:
- Attorney’s fee;
- USPTO fee; and
- Illustrator fee, if any.
The USPTO filing fee is $480 for a small entity with fewer than 500 employees, and $960 for a large entity. Our firm charges a flat rate of $700 per embodiment for the initial filing of a US design patent application. We generally do not recommend including multiple designs/embodiments in a single design application unless the design is a graphical user interface (GUI).
The illustrator fee is the remaining and only variable component of the initial filing cost. Illustrators may charge anywhere from $75 to $150 per sheet of drawings. Certain factors may reduce the illustrator’s fees, such as providing editable drawing files that allow the illustrator to make revisions without having to draft the drawings from scratch. We highly recommend using professional design drawings prepared by illustrators experienced with US design drawing requirements. Drawings not prepared by experienced illustrators tend to lack necessary subtle details, such as surface shading.
Cost of a design patent Office Action response
Every once in a while, an examiner may issue an Office Action in a US design patent application. Most design Office Actions relate to the drawings and require certain edits in order to conform to USPTO standards. The cost to respond to such an Office Action will depend upon any illustrator fees to make the required revisions, plus any attorney’s fees to file the response. At our firm, we do not charge for responding to drawing requirements in a design Office Action if our firm was responsible for the initial design drawings.
Though unlikely, it is possible to receive an Office Action rejecting the claimed design on the grounds of prior art. Such substantive Office Actions would require greater cost and effort to prepare an adequate response.
Cost of paying design issue fee
The USPTO issue fee is $350 for a small entity and $700 for a large entity. Our firm charges a single flat rate of $500 for both paying the issue fee and sending the original patent certificate once received.
Start to finish cost of a US design patent application
Assuming the USPTO does not reject your design application on the grounds that it’s too similar to prior designs, then it is possible to estimate the total cost of a US design application from start to finish.
At the time of this post, the total cost would be about $2,500 to $3,000 for a small entity, and approximately $3,400 to $4,000 for a large entity.
How long does it take to get a design patent?
As of June 2019, the average amount of time to get a first Office Action in a design application is approximately 13.8 months. The average total pendency for design applications is approximately 20.5 months.
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