Introduction
Design patents protect the ornamental appearance of an article of manufacture. A lot of people have trouble discerning the difference between trademark protection, copyright, and design patents. To be fair, they share overlapping characteristics. Know that a design patent covers how something looks, but provides no protection against imitating functionality. Before filing a design patent application, it’s wise to conduct a prior art search to ensure your design is new and not obvious compared to existing designs. Although design searches can be more challenging than utility patent searches (due to differences in classification and searching by images), a systematic approach can uncover relevant prior art.
Step-by-Step Search Process
- Understand the Classification System
- The USPTO organizes design patents according to Design Classification codes (e.g., D1 for “Edible Products,” D2 for “Apparel and Haberdashery,” etc.).
- Identify the likely classes or subclasses that correspond to your design.
- Use USPTO Databases
- USPTO Patent Public Search (formerly known as PatFT/AppFT) or specialized design patent search tools.
- Search by keywords describing the article (e.g., “chair,” “bottle,” “shoe”) combined with terms like “ornamental design.”
- Apply relevant classification codes for more targeted results.
- Check International Databases
- The WIPO Global Design Database can help you discover designs filed in other jurisdictions.
- The European Union Intellectual Property Office (EUIPO) website also offers design searches, which may reveal prior art from the EU region.
- Browse Online Marketplaces and Catalogs
- Many designs appear first in commercial settings. Explore major e-commerce sites, industry catalogs, or design-specific platforms.
- While not “patent prior art,” these references can still be relevant if they show a public disclosure predating your filing.
- Evaluate Visual Similarities
- In design patents, the claim is in the drawings. Look for designs that closely resemble yours in shape, pattern, or overall appearance.
- Minor changes might not be enough to overcome an examiner’s rejection if the overall ornamental impression is the same or highly similar.
- Document Your Findings
- Keep records of potentially relevant references.
- Make notes on why your design is distinguishable (if it is). This documentation can be valuable when drafting your application or responding to examiner rejections.
Tips and Best Practices
- Be Thorough: Because design protection hinges on appearance, thoroughly investigate all possible marketplaces and databases.
- Use Multiple Search Strategies: Combine keyword searches, classification searches, and image-based searches for best results.
- Consult a Professional: A patent attorney or agent experienced in design patents can help refine search strategies and interpret prior art references.
- Use AI and Machine Learning: With current AI systems and (slightly) legacy image matching systems (Google has one), you can upload an image of a thing and ask an AI to find (or hope image matching can find) similar looking things. This will become a more powerful route as AI systems improve.
Conclusion
Conducting a prior art search for design patents requires an eye for aesthetic details and a strong understanding of USPTO classification systems. By carefully scanning patent databases, online marketplaces, and relevant publications, you’ll be better equipped to determine if your design is likely to stand out as novel and non-obvious, maximizing your chance of successful patent protection.
Final Note
About Innovation Cafe: These articles are provided for general informational purposes and do not constitute legal advice. For specific guidance, consult a qualified IP professional who can address your unique circumstances.