Design Patents vs. Utility Patents
The essential distinction between design and utility patents is the difference in protecting “How it looks” (design) vs. “How it works” (utility). If you’re concerned about competitors copying the appearance of your concept, then apply for design patents. If you want to protect the functional features of your concept, then apply for utility patents. In some cases, it may be appropriate to file design and utility patent applications.
For example, design patent protection would be appropriate for three-dimensional product shapes (e.g., something that looks cool), but beware of any features that serve functional purposes. Design patents are meant to protect only non-functional, ornamental features. This is where consulting with a patent attorney would help.
Here’s a table broadly summarizing differences between design and utility patents:
|Design Patent||Utility Patent
|Protects||How it looks||How it works|
|Attorney’s fees for initial filing||less than $1,000||more than $5,000|
|Office Action rejections||low probability||high probability|
|How much time does it take? (average pendency to issuance or abandonment)||19 months||33 months|
|Patent term||15 years from grant date||20 years from filing date|
|How to determine infringement (point of reference)||drawings||written claims|
As shown above, a design patent costs a fraction of a utility patent application which can easily get into the tens of thousands from start to finish. Two primary factors lead to the higher costs of filing utility patent applications:
- The initial filing of a utility patent application requires greater effort in drafting the specification and claims; and
- Ongoing Office Action rejections, each requiring a thorough written response.
Differences in Protection
Since a design patent covers merely the ornamental appearance of an invention, it’s not difficult to imagine the ways in which a competitor may easily design around a patented design by creating a product that simply looks different. Utility patents are tougher to design around. Since utility patents claim the function or structure of an invention, the outer appearance of a product is less relevant to issue of infringement. A competitor may introduce a product with a very different appearance from that of a patented product and still infringe a utility patent.
How to determine infringement
To infringe a design patent, you need to do a side-by-side comparison of the design patent drawings with the accused product. The question is whether the two designs would look substantially similar in the eye of an ordinary observer, namely that the resemblance is such as to deceive the observer inducing him to purchase one supposing it to be the other.
To infringe a utility patent, you must look to the patent claims and determine if each claim element is found in the accused product.
Probability of Rejection
Utility applications have a significantly higher rate of initial rejection (approx. 80-90%) whereas design applications may often receive a first action allowance. This is due in part to the differences in the claimed subject matter. Whereas the claim in a design application is primarily visual and more limited in scope, the claims in a utility application are textual and generally broader in scope. Broader claims have a higher probability of being rejected over prior art that discloses the claimed subject matter.
Length of Application Process
It takes much more time to get a utility patent than a design patent. Since utility applications have a higher rate of rejection, they also endure a longer application process (average: approximately 3 years) than that of a design application (average: approximately 1.5 years).
Patent Term Differences
Design patents expire 15 years from the issue date and require no maintenance/renewal. Utility patents generally expire 20 years from the filing date and three maintenance fees must be paid to keep the patent alive.
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