Like with utility patents, the United States Patent Office (“USPTO”) allows patent examiners to require applicants to limit their design patent application to one design. Therefore, when an applicant has several designs, even if related, some attorneys recommend to file one application per design. This can be unnecessary and expensive, however.

There are several competing issues—costs, patent life, and viability.
Assuming all the designs are ready for filing and you file a single application for each design (at the same time), then you will be faced with multiple filing fees. Moreover, if filed together, the patents will all expire together 15 years after the design patents grant, which will be about the same time give or take a few months.

In contrast, one of the benefits of including all the related designs in one application is that if you are subject to a restriction (where the USPTO requires you to pick one design to pursue), and you file one or more divisional applications on the other designs after the first design is allowed, this could extend the patent life of the later filed application or applications by a year or two. If you do not follow through with the divisional application or applications, however, there is some significant risk. The designs that you do not pursue will be dedicated to the public. With designs, the scope of the dedication may be not be as clear cut as they are with utility patents, based on some fairly recent case law.

Other aspects to consider: Are all the designs finalized? Are all the designs viable—or are there some that you are undecided about? Or is it simply too early to tell? If you are facing any one of these issues, it may be advantageous to put several or all the designs in one application (assuming they are fairly close) and then if confronted with a restriction requirement, select the design you wish to pursue first, and then file a divisional application on the other designs. If you are certain that you want to cover all the designs, the order in which you select the designs might be the opposite of what you would expect—select the least preferred first and then end with the most preferred design.

If you are unsure that you will want to pursue all of the designs, another option is to file a design application on the one design you are most certain about and submit the remaining designs in an Appendix to the design application.

As noted, the simple option is to file a design application on each design even though there is some overlap—but there are tactics that can be used to potentially save at least near-term costs, extend the life of protection, and avoid unintentional public dedication.