Skip to Content

USPTO Announces Reevaluation of Design Patent Requirements

Fri May 27th, 2022 by  Patents

Design patents can be enormously valuable for any business, but particularly for small and medium-sized manufacturers (SMMs), who incur about 95% of their costs at the design stage. Good design and, more importantly, the protection of good design through design patents, can lower operating costs. Last month, the United States Patent and Trademark Office (USPTO) announced that it is considering an expansion of the scope of patent protection for designs. For more details, please contact an Alabama design patent attorney.  

What Are Design Patents? 

In short, utility patents protect the way a product works; design patents protect the way a product looks. Under 35 U.S.C. § 171, anyone who invents a “new, original and ornamental design for any article of manufacture” may obtain a design patent. This is in contrast to 35 U.S.C. § 101, which grants utility patent protection to any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Most design patents tend to fall into one of two categories: (1) surface ornamentation, impressions, prints, or pictures, or (2) shapes or configurations. Some design patents can cover a combination of those two categories. 

Requirements for Obtaining a Design Patent

Patent applications for design patents generally are less complex than those for utility patents, and design patents are, in most cases, comparatively easy to obtain. But the USPTO does not hand out design patents to anyone who wants one. Design patents are available only for designs that are: 

  • New (i.e., different from all other designs) 
  • Not obviously analogous to other designs
  • Purely ornamental, conferring no functional advantage 

A key requirement for design patent eligibility, as stated is that the design must be applied to or embodied in an “article of manufacture.” This term is somewhat vague but generally has been interpreted to refer to designs on articles that have some practical utility, such as the shape of a bottle, the pattern on a piece of jewelry, and text fonts. It does not include articles that exist purely for aesthetic reasons, such as artwork, statues, and films.

Why the USPTO Is Reevaluating Design Patent Requirements

Some articles do not fit neatly into the established legal definition of “article of manufacture.” For example, in 1996 the USPTO established that computer icons — which are not physical objects — could be considered articles of manufacture so long as they were shown on a computer screen or other type of display and were integral to the operation of the computer. The USPTO is now reconsidering its interpretation of “article of manufacture” to encompass cutting-edge technologies even further afield from the physical realm, such as virtual/augmented reality, holograms, and projections, among others. Given that these kinds of technologies are seeing tremendous growth, the USPTO feels that an expanded interpretation of the article of manufacture doctrine may incentivize further innovation in these emerging technologies. 

Get Help with a Design Patent Application from an Experienced Alabama Design Patent Attorney

If you have created a unique design, the best way to protect it is through a design patent. To get started with the application process, please contact an Alabama design patent attorney at AdamsIP in either our Birmingham or Huntsville office by calling 251-289-9787 or by using our online contact form.