Design Patent vs Utility Patent


Design Patent vs Utility Patent

Design patent vs Utility patent breaks down to the type of invention being protected.  While a utility patent protects the way something functions, a design patent protects the way it looks.  Both are protected by filing an application with the U.S. Patent and Trademark Office.

Design Patent Definition

A design patent only protects the way a product looks.  This means a registration will focus solely on the appearance of an item instead of its functionality. To qualify, the invention must be novel, non-obvious and non-functional. If it serves any purpose other than ornamental, design patent protection is likely not available.

The shape, surface ornamentation, configuration or any combination of the three may qualify for design patent protection. The design must be inseparable from the article in question.

The following examples meet the elements of design patent definition:

  • The recognizable rounded corners used on Apple’s cell phones.
  • The specialized seats in a vehicle can receive design patents.
  • A patent was granted to the Statue of Liberty in 1879.

None of these examples constitute an entirely new invention. The cell phone existed long before Apple got into the mobile game.  None of the underlying functional elements of the phone were new, but the design elements were novel, non-obvious and non-functional. This made them patentable under the law.

Utility Patent Definition

The original invention or improvement of a product, composition of matter, machine or process falls under the utility patent definition. This form of protection focuses on how an article functions rather than its appearance. To quality for protection, the invention must be novel, non-obvious and useful.

The following are utility patent examples:

  • The lightbulb.
  • The process for building a certain product.
  • New computer system that makes tracking flights easier.
  • “Steel kidneys” (i.e. first dialysis machine in 1946).

Just because an element of an invention serves a functional purpose, though, doesn’t mean that it doesn’t also qualify for design patent protection. Many patent owners submit applications together for the design and utility aspects of their creations. If a single aspect of an article serves the purpose of ornamentation and functionality, failing to protect both at the same time can lead to a loss of rights.

Utility vs Design Patents

The extent of rights differ between design vs utility patents.

Term of Protection

The USPTO provides 20 years of protection for utility patents starting from their filing date or earliest effective filing date. The length of protection for design patents starts from the date of issue. This lasts 15 years unless issuance occurred before May 13, 2015. If this is the case, 14 years of protection are granted.

Number of Claims

Applications for utility patents typically have multiple claims. These claims define the scope of protection being sought. They’ll describe every aspect of an invention that the applicant is claiming rights over. The same is true for design patent applications, but only a single claim is made: “The ornamental design for (the article embodying the design or to which it is applied) as shown.”

And described” can be added to this formal statement if special descriptions are properly included in the specification. In many cases, though, the basic sentence is simply used to call attention to the drawings that follow. This single claim is essentially a technicality for presenting the visual claims.

Provisional Status

Provisional applications can be filed for utility patents. This isn’t the case for design applications. Provisional status provides up to one year for an IP owner to seek full protection, but it also offers fewer safeguards against patent infringement.

Average Pendency

The average time it takes for design and utility patents to issue also varies. Utility applications generally take at least a year longer to issue than design patents.

Maintenance Fees

To maintain protection, utility patents must be renewed multiple times over many years after registration. The USPTO Fee Schedule lists the necessary fees. Discounts are available for smaller entities. Design patent owners, however, never have to renew their registration.

Design vs Utility Patent Infringement

Using, selling or manufacturing a patented item without authorization constitutes patent infringement. Whether it’s a design or functional aspect being infringed upon, the owners of properly registered patents can seek patent infringement damages in federal court if their rights are being violated.

For utility patents, literal infringement occurs if every element of a claim in a patent is met.  For design patents, courts use the Ordinary Observer Test to determine whether design patent infringement has occurred. This means the infringing article is so similar to the protected design that an ordinary observer would be deceived by the similarity of the two.

For a finding of infringement regarding utility patents, courts will go through each individual claim. If all elements of a single claim are satisfied in the infringing article, literal infringement has occurred. It’s also possible that offenders could be held liable for infringing specific claims but not others. Additionally, the Doctrine of Equivalents may be utilized. This legal principle states that literal violations aren’t necessary if the following are true:

  • The functions performed are substantially the same.
  • The functions are being performed in substantially the same way.
  • The functions are achieving the same result.

Once the courts decide that patent infringement has occurred, they can grant awards in the form of lost profits or reasonable royalties. Each of these may result in substantial monetary compensation, but awards based on lost profits are typically higher. Unfortunately, these are also more difficult to receive due to the necessity of proving a direct causal relationship between infringement and loss of profit.

One area where utility vs design patents don’t differ is that these awards will increase if willful infringement is proven. This means the patent owner will be eligible for up to three times the court award they otherwise would have received.

Patent Cease and Desist Letters

Fortunately, there is one course of action that could end infringing actions while avoiding the cost of litigation.  Patent cease and desist letters are usually the first step in dealing with patent infringement and they very frequently resolve the matter.

The amount of patent litigation seen yearly is miniscule compared to the number of legal disputes that occur. That’s because cease and desist letters are successful at keeping over 97 percent of these cases out of federal courtrooms.

Even with all the differences between utility vs design patents, patent cease and desist letters are typically straightforward. It’s not necessary to have a patent attorney compose these, but it is highly adviseable. When sending such a letter, the following information should be included:

  • Demand that patent infringement immediately end (i.e. cease).
  • Demand that infringing activities never be continued (i.e. desist).
  • Patent registration
  • Dates and circumstances of the violation.
  • Statement of further legal actions that will be taken absent comliance.
  • Appropriate deadline for response (typically 10 days).

Since proving infringement will differ based on whether you were granted a utility or design patent, the letter should be geared toward this fact. Design aspects will only have a single claim, so including a diagram of the protected ornamentation is vital. When writing based on functional aspects, time must be taken to articulate the technicalities of the infringement.

Claim construction as part of a markman hearing will play a big part in patent litigation, so fully describing which aspects of an infringing item/process are violating specific claims is time well spent.

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For questions regarding utility vs design patent protection, please feel free to contact us.


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