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In Defense of Design Patents

At our monthly inventor's group meeting it became clear that a utility patent was not an option for an inventor who was presenting his invention to the group.  When I suggested that he file for a design patent, one of the patent attorneys who frequents the group quickly replied, “Design patents are worthless.  In twelve months when it issues it will be easy to break his patent.”


My response was, “So what?”  I'll explain why in a bit, but first some background.  A design patent protects the ornamental appearance of a physical product, as opposed to a utility patent which protects how the product works (or possibly the steps used to manufacture it).  For example, automotive rims are often protected with design patents.  You can’t get a utility patent on what is basically a wheel and 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 have received a lot of flak over the years, and not just because they're weak and easy to design around (if a competitor changes the ornamental appearance enough then he can get around your design patent).  Invention promotion companies have frequently sold design patent applications to unsuspecting inventors who do not understand that patents come in these two basic flavors.  Since design patents are relatively easy and quick to prepare, inexpensive to file, and allow the inventor to legally say “Patent Pending,” invention promotion companies love them!  Everyone is happy, until the inventor learns that a design patent is the weaker of the two flavors.


Ironically, it is for many of these same reasons that inventors should now consider filing a design patent.  90% or so of design patent applications are allowed--close to 85% of them without any type of Patent & Trademark Office (PTO) rejection.  So there's a good chance that if you file a design patent, 12 to 18 months later it will actually be granted and you’ll be able to stop competitors who are flat-out copying your invention.  While most product pirates will change your design somewhat, you never know.  Some lazy knock-off artists may actually use one of your products to make their mold, and in that case, you have a case.  Plus you'll be able to say things like “my product is patented.”  Granted, it's only a design patent, and you'll need to mark your product with your telltale "D"-prefaced patent number when the patent issues.  But still, in situations where you do not have to specify that it's a design patent (elevator pitches, press releases, first dates) you can honestly say you're a patented inventor.  That's not so easy with utility patent applications, which are only being allowed at the rate of about 40%, even after multiple office actions, typically two to three years of prosecution, and an average ante of $10,000.


Design patents also cost about 1/4 of what a utility patent costs to prepare, and the fees over the life of a design patent have an even better ratio of about 14%.  The average cost to get a design patent pending is about $1,700, compared to a utility patent's average cost of $7,000 to get pending.  That's $5,300 that may be better spent on marketing and distribution of the product, arguably the most difficult steps. 


But 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 away, but they can open doors that would not otherwise be open.  Manufacturing partners, investors, customers, and licensees will all ask “What's your patent status?”  If you can honestly answer “I'm patent pending” and get in the door, you may have more time to pitch the idea before you hear the question “What type of patent did you apply for?”  I'm not saying to be dishonest, and you need to be careful not to give the wrong impression (lest you be like some invention promotion company).  But the point is that “patent pending” can get you into places that you might not otherwise have the opportunity to be, and then it's your job to close the deal and show why your idea has merit regardless of the patent status.  The book How to License Your Million Dollar Idea by Licensing Agent Harvey Reese does a good job showing you how to do this if your goal is licensing, even with a weak patent position (or with no patent at all).


Remember, design patents and utility patents are not mutually exclusive.  They each protect different aspects of the invention.  You have a year from your first public disclosure or offer for sale to file both types of patents. So you may decide, particularly if you have limited funds, to launch the product with a design patent application (so you can legally claim “patent pending”), and then within the next 12 months follow it up with a utility patent application (when it's more clear if product sales will justify that expense).  Understand that if you publicly disclose the idea, such as offering it for sale or using it in public, you'll lose your foreign patent rights for each type of patent you haven’t yet filed.  But if you don't care about foreign patents, or are not in a position to afford foreign patents, then this is a low-cost "play it by ear" approach. 


I have to tell clients all the time that a patent is not the right to make or sell a product, but rather a right to stop others from doing so.  Yet if you cannot afford to enforce those rights, or if you end-up with a weak utility patent (or none at all given the PTO’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.  But 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, perhaps in addition to a utility patent application down the road when (if) you have the money to risk.


Kevin Prince is an inventor, UC Berkeley engineer, co-founder and Vice President of Inventor’s Forum (, and Registered Patent Agent with QuickPatents in San Juan Capistrano, CA.  He can be reached through his website at

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