File both utility and design patents: When does it make sense?

Is it possible to file both utility and design patents?

The question ignored by most startups and entrepreneurs is: Why not file both utility and design patents? Most innovators tend to have an “either/or” mindset due to the distinctions between utility patents and design patents: either the invention is protectable with a utility patent or a design patent, but not both. There is no rule that says you cannot apply for both types of patents for the same invention.

A comprehensive IP strategy should take into consideration the various aspects of an innovative product that may warrant different scopes of protection. Utility patents will give you certain rights not possible with design patents. Conversely, design patents will give you different rights that utility patents cannot provide.

What IP rights do you get with utility patents that design patents cannot give?

If your concept relates to something functional (how it works), chances are that you have already been contemplating a utility patent. Perhaps you have already searched the prior art or had a patentability search performed.

With a utility patent, you would typically have broader rights to enforce against competing products that look different, but work the same. If you are concerned that competitors might change the appearance of their products, but still copy the functional or structural features of your concept, then you should seek utility patent protection.

Even if a knockoff looks very similar to your product, the competitor might argue that your design patent covers certain functional features that are not enforceable. A utility patent would give you the additional arsenal to combat any defensive challenges to the design patent covering functional features.

What IP rights do design patents give you that utility patents cannot provide?

So, the question you may be wondering is: Why bother filing design patent applications if I have already filed a utility patent application? Design patents give you IP rights to enforce against competing products that look the same, but work differently.

Keep in mind that utility patents are complicated, expensive and replete with challenges during long application process. Design patents, on the other hand, are quick and much cheaper to obtain.

Moreover, the US government is working on legislation that will enable US Customs and Border Protection to seize goods that violate design patents, since design patent infringement is easier to eyeball than utility patent infringement. US Customs does not enforce utility patents.

When does it make sense to apply for design and utility patents concurrently?

It may be wise to consider concurrent filings of both utility and design patent applications if your concept includes a mix of functional features and a unique visual appearance. Clients often ask about what rights they might have while their utility patent application is pending. If you are concerned about the risk of copycat products hitting the market sooner than your utility patent is granted, design patents can provide earlier protection while your utility application is patent pending. It certainly would not hurt to have US Customs on your side to block the import of infringing goods.

A comprehensive IP strategy for greater patent protection

In addition to the different scopes of protection, various other factors will come into play when considering both design and utility patent filings. Timing and deadlines, for example, will vary. Utility applications have different foreign filing deadlines than those of design filings. Utility nonprovisional applications typically get published while design applications do not. A single utility application may cover several embodiments whereas a single design application is typically limited to a single embodiment.

The point is that you should take a holistic approach in protecting the IP of your products and concepts. Such a comprehensive strategy may, in certain circumstances, warrant the simultaneous filing of both design and utility applications for the same innovation.

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