Design patent or utility patent?
One of the most common questions we get from startup entrepreneurs is whether they should file a design patent or utility patent. While every concept is different, certain general guidelines can help you choose the right patent application. Technical differences between utility and design patents have been discussed here. With this article, I want to to share some helpful pointers on which patent filing might be appropriate by focusing the questions on your invention.
What is the general nature of your product?
Is your product a software app? Does it include hardware? Are you thinking selling something more simple, like a physical consumer product that has certain unique features? Does your idea relate to a process or methodology?
The general nature of your product is a good starting point to determine whether you should pursue a design patent or utility patent. If the appearance of the product is unique and primary, then a design patent application is likely a good option. If functionality is what you want to protect, a utility patent may be the right choice. In some cases, it may make sense to file both utility and design patent applications. But, we’ll need to dive deeper into the innovative features to get a better sense of which patent filing would fit.
Are the innovative features of your concept more functional or visual?
Functionality vs. appearance is the key question, but you need to ask that question with respect to the innovative features of your concept. In other words, the question is not whether your product overall is functional. It is whether your unique features primarily visual or functional in nature. It is possible to have a generally functional product, and yet file a design patent application on certain ornamental features of the product.
Here are some examples where utility patents might make sense:
- products that result in additional useful benefits which are lacking or deficient in prior products
- products that address unresolved needs
- processes that reduce costs, increase speed or make manufacturing more efficient
- mobile apps with unique functionalities
- products with combinations of hardware and software
- products that help businesses become more efficient, profitable, effective or smarter
- products that converse energy or natural resources
If your unique features are generally visual, you should file a design patent application. Here are examples where design patents may be appropriate:
- products with cool or weird looking features
- product with aesthetically unique or different appearance
- two-dimensional graphic design on a product
- graphical user interface (GUI)
- component of an overall product or system, where the component is visually unique
- toys, hobbies, crafts and gadgets that look different
If your unique features are both visual and functional, you may need to file for both design and utility patents. For example, you may have a product for babies and kids that are more durable or lighter due to certain structural differences. Those structural differences might be protectable with a utility patent. At the same time, your product might have an aesthetic appeal that would eligible for design patent protection.
Common mistakes in choosing design patents over utility patents
One of the most common errors I see is when a startup incorrectly thinks that a design patent will somehow fully protect a new product, only to realize later that the functional features are unprotected. These decisions are often dictated by budget restraints.
Cost-sensitive entrepreneurs can avoid this mistake without spending a lot of money upfront. File a provisional patent application to keep the option open for utility patents, and give yourself a year to obtain funding.
Common mistakes in ignoring design patents
A product may be functional in nature, and yet have some features with unique ornamental appearances. Even if your unique features are primarily functional, you may be overlooking low hanging fruit by skipping design patents. Design patents are typically cheaper, easier and faster to obtain. Having one or more granted design patents can equip you to block knockoffs on ecommerce platforms while you wait for your utility patent to be issued.
Don’t forget that the parts of an overall product might be eligible for design patent protection. In the US, inventors have flexibility to claim only a portion of an overall product by using broken lines to show context, and solid lines to show the part for which protection is sought.
Common mistakes in waiting too long to file patents
Waiting too long is the same as choosing no patents. That might be OK if you have decided that patent protection does not fit your product. My suggestion is that if you forego patents, make this decision earlier and know the reasons why patents do not make sense for your product.
What you do not want is to delay answering the question. If patents are an afterthought, you might simply be too late. Keep in mind that US patent laws give inventors a 1-year grace period to apply for US patents. Grace periods for foreign patents, if any, would depend upon the patent laws of each particular foreign country.
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