patent design in ny

How to Get a Patent Design in N.Y.

In New York and other parts of the United States, a patent can be obtained by anyone who creates any “new, original, and ornamental design” for any item (35 U.S.C. 171). The U.S. Patent and Trademark Office (USPTO) issues in three primary categories: plant, utility, and design. 

To protect an invention’s aesthetic or non-functional qualities, New Yorkers can obtain a design patent

Any innovative and non-obvious design for an object of manufacture that meets the requirements of U.S. patent law can be protected by a design patent. But unlike a utility patent, which protects functionality, a person who files for a patent design in N.Y. will only have protection for the item’s appearance and design. 

Understanding Patent Design in N.Y.

A design patent will only cover the design of an item and not the functionality or construction.

The visual aesthetic features incorporated in or applied to a product of manufacture constitute its design for patent purposes. A design patent can pertain to the following, given that design is manifested in appearance:

  • Form or arrangement of parts
  • Embellishments made to the item’s exterior
  • Incorporation of both the item’s shape and its surface decoration

Several categories of goods can qualify for design patent protection. For example, accessories such as glasses, shoes, lighting systems, packaging, furniture, and electronic displays can all be protected by design patents. The most popular design patents in N.Y. are for furniture and packaging products.

To be eligible for patent protection, a design must be “new, original, and ornamental,” which means that someone with ordinary skill in the relevant art cannot have anticipated it. 

In addition, the item must have an unobvious appearance and not be solely the result of an unmistakable arrangement of the old components, although a design may comprise old components.

Design Patents vs. Utility Patents

The distinction between a utility patent and a design patent is commonly misunderstood. So what is the difference between a design patent and a patent?

A design patent solely covers an item’s outward appearance, but it can also cover “how” an object functions simply because of its shape. However, this does not provide the same level of legal protection as a utility patent.

If you want to protect the method by which a manufactured item acts, the material makeup of the item, or the underlying machine, you’ll need a utility patent. Although design and utility patents expire at different times, it is not rare for innovators to get both simultaneously. Find out how to get a utility patent in NY.

How Design Patent Applications Work in N.Y.

A design patent application is reviewed and examined by the USPTO, and the USPTO examiner will only grant a design patent if the design is considered innovative and non-obvious.

The process of obtaining a design patent requires careful planning. This may necessitate updating the patent drawings to show alternative forms of the claimed invention.

Submitting Drawings With Design Patent Applications

The drawings included in a design patent application establish the boundaries of the patent’s protection.

Any variations in the design’s proportions, shape, or size may also be shown. It is also possible to broaden the protection sought by a design submission by sketching specific details with dashed or buried lines.

Drawings of the item of manufacture must be prepared in conformity with rules established by the USPTO. To do so, you need to hire a draftsman who is well-versed in these standards and has experience creating them for design patent applications.

Submitting Design Patent Applications Abroad

Community or industrial design patents are typically obtained through a registration procedure in most nations outside the United States. Registration in the foreign jurisdiction succeeds after the necessary documentation and drawings are submitted and found to comply with the formality criteria of that country.

Only when the registered design is asserted against any infringing parties does a comparison take place.

There are two options for submitting design patent applications abroad: 

  • Applying individually in each foreign jurisdiction, or; 
  • Filing a single international design application.

A design can be registered in over fifty nations with just one international application filed under the Hague System.

Priority benefit from a U.S. file can only be claimed if a foreign filing is made within half a year after the earliest U.S. filing date. Furthermore, foreign submissions should be made before commercial use or public disclosure to avoid statutory barriers to pursuing design patent protection.

Breaking Down the Benefits of Design Patents

Design patents offer an advantageous practical route to patent protection in New York. Legally speaking, design patents can be an excellent weapon for avoiding or ending counterfeiting. They are also helpful in stopping the import of illegal goods. 

When compared to utility patents, design patents offer numerous benefits:

  • No renewal costs or fees. When the design patent is issued, the owner will not be required to pay any renewal or other costs.
  • Faster processing times. Applications for design patents also have a far higher allowance rate and, unlike utility patent applications, which might take two to three years (or more), design patent examinations are usually completed within a year. 
  • Eligible for expedited review. U.S. design applications can also undergo fast-tracking for review. A petition requesting an expedited inspection, the government fee, and the findings of a prior art search are required for expedited assessment.

In most cases, a design patent can be issued within six months of an adequately filed accelerated design patent application undergoing inspection.

It’s important to note that design patents offer the same promotional benefits as utility patents, including the phrase “patent pending,” which can be added to a product’s packaging once an application has been submitted. After receiving a design patent, you can modify the marking to read “patented.” 

However, design patents only provide limited protection in contrast to utility patents. For example, they do not prevent others from copying an invention’s functionality or structure unless the invention also features a replicated form or shape. Consult with a New York patent attorney to determine which type of patent (or both) is right for your invention.

Consult a N.Y. Patent Lawyer About Filing Design Patents

Design factors are becoming increasingly important in business. Whether as the only form of intellectual property protection or as part of a larger legal strategy, design patents can play a significant role in safeguarding design advances and helping to decrease competition.

By prohibiting others from employing, producing, or marketing the idea for a set period after the patent is issued, patents protect the creators of new, novel, and non-obvious designs and items.

Getting a design patent is not always easy. If you want to ensure you’re protected, consult an experienced intellectual property attorney in New York. Tatonetti IP can help you with everything, from deciding whether to file a provisional or non-provisional application to submitting the required fee and dealing with complications.

Patent Design in NY: Frequently Asked Questions

What is a design patent?

A design patent safeguards the aesthetically pleasing form of a manufactured good. The product’s surface, shape, and configuration all fall under design patents. A design patent does not protect the underlying design or functionality.

How long do design patents last?

A patent on a new design will eventually expire. A design patent obtained by the United States government lasts 14 years from the invention’s issuance. Once issued, a design patent doesn’t require any more payments to keep it valid, unlike utility patents.

How does the process of enforcing a design patent in N.Y. differ from obtaining it?

Enforcing a design patent in New York involves legal actions against potential infringers. This typically includes sending cease and desist letters, initiating litigation, or pursuing settlements. Legal considerations often include proving the validity of the design patent, demonstrating infringement, and seeking appropriate remedies, such as damages or injunctions. It’s essential to consult with experienced intellectual property attorneys who can navigate the complexities of design patent enforcement effectively.

What are the most common challenges inventors face when seeking design patents in N.Y.?

The biggest challenge is in demonstrating the novelty and non-obviousness of their designs, particularly in crowded industries where similar designs are common. Our strategies for overcoming these challenges for our clients include conducting thorough prior art searches to identify existing designs, focusing on unique aspects or innovative features of the design, and providing detailed explanations or evidence to support the design’s originality. Leveraging the expertise of a patent attorney is beneficial in crafting strong design patent applications that meet the rigorous standards of the USPTO.

Leave a Comment

Your email address will not be published. Required fields are marked *