Are design patents easier, faster and 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. The lower costs and higher approval rates of design patent applications make them worthy of consideration as an important part of an overall IP strategy. Factors beyond the lower design patent cost should also encourage IP owners to consider this often overlooked intellectual property right.

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.

What is the initial filing cost of a US design patent application?

As is generally the case with patent attorney’s fees, the rates depend upon the attorney/firm. My firm charges a flat rate attorney’s fee of $750 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 $510 for a small entity and $1,020 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 $270 to $500 for a set of drawings.

If a company owns the patent rights, then a patent assignment should be filed preferably with the initial filing or shortly thereafter. Our firm charges a flat rate for $160 for filing an executed patent assignment. If the applicant is aware of relevant prior art, those prior art references need to be disclosed in an Information Disclosure Statement (IDS) which we prefer to file upfront or shortly after the initial filing.

So, the initial filing of a US design patent application may range from roughly $1,560 to $2,000 for a small entity, depending upon the above factors.

What are possible additional design patent 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.

What is a design patent Office Action?

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.

How much is the design issue fee?

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 $370. So our total cost for paying the design issue fee for a small entity is $870.

How much is the cost of applying for a design patent from start to finish?

Unlike utility applications which bear a high degree of uncertainty, most design applications will be allowed. The high approval rates of design applications enable more accurate estimates of entire prosecution costs from start to finish. Assuming no substantive Office Actions, the overall design patent application cost from start to finish will approximately range from $2,200 to $3,000.

What is our firm’s 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.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com