By J.D. Houvener
Patent Attorney and Founder
Patent Attorney and Founder
When it comes to protecting a design patent, it’s important to understand the distinctions between design patents and utility patents. Let’s break it down:
Protecting a Design Patent
- Direct Application: There is no such thing as a provisional application for a design patent. You must file a design patent application directly, which is equivalent to a non-provisional application on the utility side.
- Design vs. Utility Patents:
- Design Patents: These protect the ornamental appearance or aesthetic aspects of an invention. If your invention’s unique shape, configuration, or surface ornamentation is what you want to protect, a design patent is appropriate.
- Utility Patents: These protect the functional aspects of an invention—how it works or what it does.
Strategies for Comprehensive Protection
- Research: Conduct a thorough patent search to ensure your design is novel and not already patented. This will save time and resources by confirming the originality of your design.
- Utility Patent with Provisional: If there is any novel functionality associated with your design, consider filing a utility patent application. You can start with a provisional application to secure an early filing date. A provisional patent application is less formal and less expensive, giving you a 12-month period to file a full utility (non-provisional) application.
- Include Detailed Drawings: Whether you’re filing for a utility or design patent, ensure you include comprehensive drawings and figures. For design patents, these drawings are crucial as they define the scope of what is being protected.
- Dual Filing Strategy:
- File a Provisional Utility Application: Include detailed descriptions and drawings that cover both the functional and design aspects of your invention.
- File a Non-Provisional Utility Application: Before the provisional application expires (within 12 months), file a full utility application.
- File a Design Patent Application: Simultaneously, or after filing the provisional, file a design patent application. This approach helps protect both the functional and aesthetic aspects of your invention.
- Continuation Application: If you initially file a utility patent application and later realize the design aspect is also critical, you can file a design patent application as a continuation. This allows you to claim the benefit of the earlier filing date of the utility patent.
Conclusion
To effectively protect a design, you should file a design patent application directly, as there is no provisional option for design patents. However, if your invention also has functional aspects, consider filing a provisional utility patent application. This approach provides comprehensive protection by covering both the design and functionality, creating a robust patent portfolio.
By following these steps, you ensure that your invention is well-protected from multiple angles, leveraging both design and utility patent protections to their fullest extent.