Design Patents vs. Utility Patents
Design patent or utility patent? This is a critical question that you need to resolve early in your patent journey. 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 a design patent. If you want to protect the functional features of your concept, then apply for a utility patent. In some cases, it may be appropriate to file both design and utility patent applications.
Should you file a design patent or utility patent?
Design patent protection would be appropriate for three-dimensional shapes and two-dimensional product designs. If your product has a visual feature that simply looks cool or different, and serves no functional purposes, a design patent application may be the way to go.
Design patents are meant to protect only nonfunctional, ornamental features. That does not mean, however, that a functional product is ineligible for design protection. There may be times when a product can qualify for both utility and design patent protection. This is where consulting with a patent attorney would help.
When your unique product features are primarily functional, consider filing a utility patent application. To pick between a utility patent and design patent, here’s a good question to ask:
Can others copy my product to do the same thing but with a different look?
If the answer is yes, then consider applying for a utility patent. That does not necessarily mean that you rule out design patents. Just recognize that design patents will not protect the functionality of your unique features. Your design patents will still cover competitive products with a substantially similar visual appearance.
How to Decide Between Utility Patent and Design Patent
Here’s a table summarizing differences between design and utility patents:
|How it looks
|How it works
|Attorney’s fees for initial filing
|less than $1,000
|more than *$6,000
|Allowance rate / Office Action rejections
(7 out of 8 allowed)
|90% rejection (OA)
followed by 50% chance of 2nd OA
|How much time does it take? (average pendency to issuance or abandonment)
|Start-to-finish cost (for small entity)
|$2,000 to $4,000
|$15,000 – $30,000
|15 years from grant date
|20 years from filing date
|How to determine infringement (point of reference)
Here’s a helpful video explaining the differences between a utility patent and design patent.
What are cost differences between design patents and utility patents?
As shown above, the cost of a design patent is fraction of the cost of a utility patent application which can easily get into the tens of thousands from start to finish. In most cases, it will cost roughly $2,000 to $4,000 to obtain a design patent.
Assuming you can get it granted, a utility patent will cost roughly $15,000 to $30,000 from start to finish. Some utility patent applications may cost more if you have to deal with repeated Office Action rejections and the possibility of an appeal.
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.
How do utility patents differ from design patents 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 circumvent. Since utility patents claim the function or structure of an invention, the outer appearance of a product is less relevant to the 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 visual 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. Would the resemblance deceive observers, inducing them 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.
What are the different probabilities of Patent Office rejections?
Utility applications have a significantly higher rate of initial rejection (approx. 80-90%). In contrast, design applications may have a high rate of approval. On average, roughly 7 out of 8 design patent applications will be allowed.
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.
What are the different lengths of the patent 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 to 4 years) than that of a design application (average: approximately 1.5 to 2 years).
What are differences in expiration dates between design patents and utility patents?
Design patents expire 15 years from the issue date and require no renewal payments. Utility patents generally expire 20 years from the filing date if the three required maintenance fees are timely paid. A utility patent can expire earlier than the 20-year date if a particular maintenance fee is not timely paid. Keep in mind that any expired patents will still count as prior art for patentability purposes.
Need to file a utility or design patent application? Not sure which to file?
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