Photo by Kaboompics
The road to protecting your inventions is not easy. The world of innovation is spinning faster every day, generating an ever expanding the universe of “prior art” inventions that examiners may use to reject a patent application. Moreover, the “first-to-file” system of the United States Patent and Trademark Office (USPTO) has pit inventors in a race to the patent office, as it is no longer enough to simply be the first to invent something.
Almost always, an inventor applies for either a utility patent or a design patent. The utility patent, by far the most common, protects the functionality or usefulness of an invention. The design patent, on the other hand, aims to protect the physical appearance – or “ornamental design” – of an invention. But what if you – an applicant – believe you can describe your invention in terms of both function and looks? Well then, you may be able to obtain both types of patents. Consider LEGO’s design and utility patents as one example.
In fact, applying for both types of patents is recommended whenever possible. Utility patents are a stronger form of IP protection, as they can also protect a design if the you claim it as part of your invention. Unfortunately, the USPTO takes much longer to examine utility applications and rejects them more often than design applications. Therefore, though a design patent will not cover the functional elements of an invention, it can at least act as backup IP protection if the utility application is rejected or otherwise fails to issue as a patent. In a perfect world, a design patent will not only provide a faster and cheaper form of protection than a utility patent, but also supplement the protection provided by an issued utility patent.
Beyond just racing to the patent office, however, inventors also want to race their patent application through the patent office to get a patented product/design to market as fast as possible. For example, inventors commonly want to begin asserting their patents against infringers on direct-to-consumer e-commerce platforms like Amazon.
The USPTO gives utility patent applicants several methods to fast-track their applications – Track One, the Patent Prosecution Highway, Accelerated Examination, and more. What about design patents? Though lesser known than its utility counterparts, the Code of Federal Regulations permits you to request expedited processing of your design application. This is done by submitting a “Rocket Docket” request form to the patent office, along with an additional fee and an information disclosure statement (IDS) from a prior art search.
That’s not all. Fast-tracking the design application can actually help an your get their utility patent issued as well. How so? Consider co-filing that expedited design request with a provisional utility application. A provisional application is a means of holding your utility application’s place in line at the USPTO for up to one year before filing the regular, non-provisional patent application. More detail on provisional applications can be found in an earlier article. Now, those familiar with patent prosecution will know that a design application cannot secure the filing date for a provisional utility application, and vice versa. That does not mean, however, that you should have to choose between an expedited design application and a provisional utility application; there are several benefits to filing both concurrently.
The Need for Speed
Properly executed, the “fast-track” approach of a Rocket Docket request can earn you a design patent in less than six months, when it could otherwise take close to two years. The most recent USPTO data shows that a Rocket Docket request can also get a design application to the examination phase seven times faster than the traditional design filing process – from almost 18 months to under 3 months.
The Backlog at the Patent Office
Utility patent applications can commonly take more than three years to issue. A huge reason for this extended waiting period is the backlog of patents awaiting examination at the USPTO. The roughly 8,000 patent examiners employed by the USPTO is simply not enough to keep up with the now over 600,000 US utility patent applications being submitted each year. Moreover, the number of unexamined utility applications is currently nearly tenfold the number of unexamined design applications. The number of design patent applications also significantly outweigh the number of examiners – and increasingly so – but the burden remains much less for now.
Design Patents are Getting Stronger
The relatively recent surge in design patent applications is due in large part to the newfound value of the design patent. It was not until 15 years ago that the Federal Circuit reverted to a design infringement and anticipation standard that is much more favorable to design owners. In doing so, the court gave design patents teeth that they lacked under the previous test.
Up-and-coming methods of enforceability also promise to add value to design patents. Amazon, for example, launched its Utility Patent Neutral Evaluation Program in 2019 – now formally adopted as the APEX Program – to permit owners of active utility patents to enforce their exclusive rights against infringers on Amazon’s marketplace. A short explanation of how the Program works can be found by scrolling down here. It is said that APEX will soon be expanding, or a similar program will be created, to protect design patents as well.
Another example of enforcement is the Counterfeit Goods Seizure Act of 2019. If passed, this law would allow US Customs and Border Protection (CBP) to seize counterfeit goods from foreign sources that infringe US design patents. This is a measure of protection currently already available to US trademarks. Design patent holders would avail themselves of similar protection under the Act simply by recording their design patents with the CBP. As programs and laws continue to grow, so too will the value of the design patent.
Know the Examiner’s Thoughts
The speed of the expedited design process gives you the potential to receive a design examination well before the one-year deadline of your co-filed provisional utility application. Whether that examination initially ends in a rejection or allowance, the results provide you with valuable insight as to the examiner’s search strategy. Armed with knowledge of how the examiner approached and scrutinized the design application, you can then prepare your nonprovisional utility application with a better chance to pass muster in its own examination, while still reaping the benefit of the provisional filing date.
By using the Rocket Docket to fast-track the already most expedient route of design patent applications, a design applicant may very quickly gain protection over the appearance of her invention. This protection not only affords the applicant (now owner) with a valuable and enforceable design patent, but can also strengthen her chance of obtaining a utility patent. By co-filing the design application with a provisional utility application, the applicant is even further ahead other prior art that is added to the universe during the pendency of the expedited design process. Rockridge® can help you make these filings and earn the greatest potential protection for your novel designs and/or functional inventions.
About Logan Ray
Logan is a registered patent attorney at Rockridge®, a Certified B Corp and RealLeaders Top 150 global impact company. Logan previously worked at the University of Cincinnati Tech Transfer Office and the IP team at Angiodynamics, a New York-based company specializing in medical devices used to treat cancers and vascular diseases. Prior to law school, Logan spent nearly a decade as a registered dental hygienist.
Logan’s practice areas include:
- patent and trademark prosecution, licensing and litigation;
- corporate law, with an emphasis on benefit corporations, socially responsible businesses and high-growth emergent companies;
- government contracts, with an emphasis on innovation funding;
- corporate and investor financing; and,
- technology commercialization.
Email Logan Ray directly at email@example.com.