If you’re a designer who has invented several new designs, you might be wondering how many designs you can patent per design patent application. This is a common question that we get all the time.
The USPTO (United States Patent and Trademark Office) offers three types of patent protection, utility patents, design patents, and plant patents. Design patents allow inventors to protect the ornamental aspects or appearance of an article of manufacture. This makes design patents different from utility patents that protect the composition of an invention and how an invention works.
Inventors patent their designs to protect their intellectual property. Design patents allow inventors of designs to restrict others from using, making, selling, and importing their invention within the United States for a limited period of time. For design patents, this period of time is 15 years from the date a design patent is granted. So, can a single design patent application include multiple designs? We will answer this question in the section below.
How Many Designs Can You Patent?
A design patent application can only patent (claim) one design, if you have more than one design, you will have to file a separate design patent application for each unique design.
That said, multiple embodiments (forms or versions) of the same unique design are permissible to be filed as a single patent application, however, design patent applications with multiple embodiments may be rejected by the patent office for attempting to protect more than one design.
It’s best to have one unique design per design patent application, but if you want to protect more than one embodiment in a single design patent application, make sure that the embodiment shares some common design features.
Having said that, if the patent examiner determines that more than one design (invention) is present within the design patent application, he may restrict the application to a single design.
The benefit of having a design patent application with multiple embodiments of the same invention (design) is that the applicant will only need to file one application and pay only one filing fee.
Just remember that if the patent examiner does not permit all of the embodiments to go forward, the applicant should choose the broadest claimed embodiment to issue by canceling all of the other embodiments. If the other embodiments are important enough, the applicant can protect them by filing separate design patent applications for each embodiment.
What are the Benefits of Protecting Multiple Embodiments in a Single Patent Application?
The only benefit for grouping multiple design embodiments into a single design patent application is to save money on USPTO patent applications fees and attorneys’ fees. For someone who is claiming multiple embodiments, the fees saved are not trivial, so it makes sense that some applicants would try to protect multiple embodiments, using one design patent application.
That said, the benefits of grouping multiple embodiments into one application are limited to saving money. Design patents, unlike utility patents, do not require than a patent holder pay maintenance fees, so an applicant would not save money on maintenance fees.
Risk of Including Multiple Design Embodiments in One Patent Application
The risk an applicant runs when including several embodiments of a design using a single design patent application is that the patent examiner will find several distinct designs (inventions). This violates the rule that applicants can only patent one design per design patent application.
If a patent examiner makes the determination that the application is seeking to protect multiple designs (inventions), the examiner may issue a restriction requirement, requiring the applicant to choose a certain design claim to prosecute in the design patent application.
At this point, the applicant may choose the broadest design claim to go forward, while canceling the rest of the claimed designs. If the other designs are important to the applicant, the applicant can still protect them by filing separate design patent applications for each of the designs.
Filing a Design Patent Application with Multiple Embodiments Could Cost More in the Long Run
Filing a design patent application with multiple embodiments could cost more in the long run because the applicant may incur lawyer fees to have the lawyer file a response picking a particular design to go forward.
Also, the applicant may incur USPTO fees and lawyer fees to have his attorney file a divisional application to protect the designs that the applicant had to cancel from the original design patent application.
So, if an applicant includes multiple variations for the same design to obtain a broader patent, he should be prepared to file a divisional application to protect the excluded embodiments that were filed in the original design patent application.
Example of Multiple Embodiments in a Design Patent Application
Here is an example of a design patent application claiming multiple embodiments of the same design:
Utility Patent Multiple Claims vs Design Patent Single Claim
It comes as no surprise that utility patents are significantly different than design patents. Because of these differences, applicants of utility patents seek to disclose any and all embodiments of an invention as possible within the same utility patent application, the same is not true for design patents.
When filing a design patent application, the applicant can only claim one distinct design per patent application. If an applicant includes several design claims, it’s highly likely that the patent examiner will cancel all additional claims in the design patent application.
Forfeiting Parts of Your Design If you File Multiple Designs
If an applicant for a design patent includes multiple design embodiments in a single design patent application, the patent examiner may conclude that embodiments are too distinct from each other. If this occurs, the patent examiner may issue an office action requesting that the applicant choose one design to pursue in his design patent application.
That said, if the different embodiments of the same design are similar, the patent examiner may conclude that the embodiments constitute a single design (invention) with the embodiments being variations of the same, distinct design. At this point, the design and all of its embodiments will issue as a single design patent.
Delays in Obtaining a Design Patent
According to the USPTO, design patents have a significantly high allowance rate of approximately 84%, therefore if an applicant files a design patent application that claims one unique design, there is a high chance that the application would proceed from filing to allowance without an applicant every receiving an office action.
When an applicant for a design patent includes multiple embodiments of the same design, he is increasing the probability of receiving an office action thereby delaying the process of obtaining a design patent for the main design, as well as different variations of the same design.
Therefore, if time is of the essence, an applicant may benefit and speed up the process of obtaining a patent by only seeking to protect a single embodiment of a design using a single design patent application.
Abandonment of Additional Designs
If an applicant chooses to include multiple embodiments of the same design using a single design patent application, the applicant runs the risk of abandoning additional embodiments which will become part of the public domain.
This scenario occurs when a patent examiner comes to the conclusion that the embodiments of a design constitute distinct designs that require separate protection. If this happens, the applicant will have to make one of two choices. He must either file a divisional application to protect the distinct designs or the non-elected designs will become part of the public domain.
So, what should you take away from this? If you want to file multiple design embodiments, be prepared to file a divisional application if the patent examiner issues a restriction requirement or risk your embodiments becoming part of the public domain.
Filing a Divisional Application
In the event that an applicant wants to protect non-elected designs (claims), the applicant will have to file a divisional application while the patent is still pending at the USPTO. The divisional application maintains the priority date of the original design patent application. The benefit of maintaining an earlier priority date is that if a third party files an application to protect the same or similar design after your priority date, you will have priority over them.
How Many Design Patent Applications Can the Same Person File?
An applicant can file as many design patent applications as he or she wants. The USPTO does not limit the number of design patent applications that the same individual can file.
Strategy For Protecting Many Designs
If you’re an applicant who has different variations of the same design, you have to determine whether the designs are significantly different as to warrant filing multiple design patent applications.
If your designs are significantly different, it may save you time, money, and heartache to protect each distinct embodiment of your design using separate design patent applications. Doing so will save you from having to deal with a restriction requirement.