Many companies and inventors seeking patent protection often wonder what type of patent to file for. There are two main types of patents granted by the U.S. Patent Office: design patents and utility patents. Determining which type of patent to file for is one of the most crucial decisions for an inventor in receiving adequate protection for their inventions. Utility patents are the most common type of patent used, but design patents are preferable in certain situations, and are becoming more important.
What is a Utility Patent?
In general terms, a utility patent protects the way an article is used and works.
You can be awarded a utility patent when you invent a new process, machine, manufacture, composition of matter, or any improvements thereof. A utility patent protects the structure, composition, or function of an invention, and generally lasts 20 years from the earliest filing date. This type of patent can protect a physical device, a step-by-step method (such as software or method of manufacturing), compositions of matter (chemical or biological).
Utility patents are advantageous over design patents because they protect the function, or how an article is used and works, of an article. The design of said article can change and still be protected by the utility patent as long as the claimed function is still present.
However, there are some disadvantages to a utility patent. Utility patents are more expensive and difficult to obtain than a design patent. An applicant for a utility patent should expect the Patent Office to initially reject their utility patent application and should expect to respond to at least one rejection before their application is possibly allowed. Additionally, maintenance fees must be paid every 3-1/2, 7-1/2, and 11-1/2 years after the patent issues.
What is a Design Patent?
Generally speaking, a design patent protects the way an article looks.
An inventor would seek a design patent when they have a protectable design. A protectable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. The ornamental characteristics for an article includes its shape/configuration or surface ornamentation applied to the article.
A design patent does not protect the mechanical structure, but rather will protect the appearance. An example would be sunglass frames. In any pair of sunglasses, their will be frame that supports the lenses on the wearer’s head. A design patent would not protect the mechanical structure, but rather will protect the appearance. Henceforth, it is possible for many different styles to receive design protection, as the question is whether the presentation or appearance of the functional item is unique.
Design patents, which last for 15 years, are nice because they are typically cheaper and easier to receive than most utility patents. Additionally, a design patent usually takes 6-12 months to be awarded, where a utility patent can take much longer. The shortened amount of time to receive a design patent can be beneficial for inventors who want some sort of enforceable protection faster while they wait for on their utility patent applications during prosecution. Also, a design patent does not require any maintenance fees.
When to File Both a Design Patent Application and a Utility Patent Application
Utility patents should be used when the function, structure and interior workings of an invention is to be protected. Design patents protect the exterior of the product and should be used when that is what is desired to be protected.
If an article has both a unique utility and design, an inventor may obtain a design and utility patent.
If an inventor is already filing a utility patent application on a device, filing for a design patent as well can be advantageous to provide overlapping protection by protect the unique design, given the lower cost of obtaining a design patent.
Additionally, design patents have been gaining in strength in recent years. After court decisions over the last ten years, patent infringement now requires focus on the drawings in total to assess whether an ordinary observer would believe the accused infringing product is a copy. This makes it easier to demonstrate infringement than the standard courts have used in the past, which required the jury to focus on the point of novelty and not the totality of the drawings.
Inventors and business owners should protect themselves by working with their patent attorneys to ensure their intellectual property is fully protected. Patent attorney Derek Clements of Bold IP authored this article. Bold IP patent attorneys are ready to assist in any intellectual property matters.