Many companies and inventors seeking patent protection often wonder what type of patent to file for.
You’ll be pleasantly surprised to hear that there are only two main types of patents granted by the U.S. Patent Office: design patents and utility patents.
There is a third type, called plant patents, that will not be discussed in this article.
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). – USPTO.gov
Determining which type of patent to file for is one of the most crucial decisions for an inventor in receiving adequate protection for their inventions.
Utility patents are the most common type of patent used, but design patents are preferable in certain situations and are becoming more important.
Please Note: Understanding the difference between Utility Patent vs. Design patents is only one part of the 13-step process in how to get a patent your idea!
We encourage you to learn the other steps but for now, let’s dive into understanding the difference between utility patents and design patents!
BONUS RESOURCE! Scroll to the bottom to see a visual infographic sharing the main differences & similarities of design & utility patents.
What is a Utility Patent?
In general terms, a utility patent protects the way an invention functions, and how it is used.
You can be awarded a utility patent when you invent a new process, machine, manufacture, composition of matter, or any improvements thereof (Section 101 of Title 35 USC).
Here’s an example of a Utility Patent, which is owned by Apple, Inc.
This is a great example of what a software patent looks like. It qualifies as a “process” under Section 101.
The front page is below, with an image of one of the figures, showing the process:
A utility patent protects the structure, composition, or function of an invention, and generally lasts 20 years from the earliest filing date.
This type of patent can protect a physical device, a step-by-step method (such as software or method of manufacturing), compositions of matter (chemical or biological), and a unique assembly (manufacturer).
Utility patents are advantageous over design patents because they protect the function of an article, in other words how an article is used. The design of said article can change and still be protected by the utility patent as long as the claimed function is still present.
Don’t miss that!
The beauty of utility patents is that it can cover MANY different embodiments (fancy word for different versions) of your invention, and even other applications in industries outside of your own.
However, there are some downsides to a utility patent. A utility patent tends to be more expensive and difficult to obtain than a design patent.
You can more about how long it takes to get a patent by checking out my article: “How Long Does it Take to Get a Patent”
An applicant for a utility patent should expect the Patent Office to initially reject their utility patent application and should expect to respond to at least one rejection before their application is possibly allowed.
Additionally, maintenance fees must be paid every 3-1/2, 7-1/2, and 11-1/2 years after the patent issues.
The image below further illustrates the process of obtaining a utility patent.
This is also explained in-depth in my article: “How to File a Provisional Patent Application in 13-Steps”
What is a Design Patent?
Generally speaking, a design patent protects the way an article looks.
An inventor would seek a design patent when they have a protectable design. A protectable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture.
In the example above for Utility Patents, I provide a key process that Apple, Inc. has protected their wireless pairing with. I wanted to show a design patent that is also owned by Apple that I’m sure you will recognize, the original iPhone.
You will see on the above example that the Claim language for a Design Patent is very bare-bones and is only one sentence long!
Take a look at the design below:
What’s cool about this is that they claim the screen itself in this design, as you can see the solid lines are what’s claimed in a design application. The dashed lines are not claimed.
Here’s another example: Christmas tree ornaments.
Think about the ornaments on the tree.
What is their purpose? To look good, right?
Well, looking good is what’s possible to protect with a design patent!
Note, that the ornamental characteristics for an article includes its shape and configuration or surface ornamentation applied to the article.
A design patent does not protect the mechanical structure, but rather protects the appearance.
It’s the fact that the ornament is generally round, but has indents, or glitter, or ridges at specific locations, and has a patterned top and bottom with striping, etc.
A design patent would not protect the mechanical structure, but rather will protect the appearance. Henceforth, it is possible for many different styles to receive design protection, as the question is whether the presentation or appearance of the functional item is unique.
Design patents, which last for 15 years, are nice because they are typically cheaper and easier to receive than most utility patents.
Additionally, a design patent usually takes 6-12 months to be awarded, where a utility patent can take much longer.
The shortened amount of time to receive a design patent can be beneficial for inventors who want some sort of enforceable protection faster while they wait for on their utility patent applications during prosecution. Also, a design patent DOES NOT require any maintenance fees.
When to File Both a Design Patent Application and a Utility Patent Application
Utility patents should be used when the function, structure and interior workings of an invention is to be protected. Design patents protect the exterior of the product and should be used when that is what is desired to be protected.
If an article has both a unique utility and design, an inventor may obtain a design and utility patent.
If an inventor is already filing a utility patent application on a device, filing for a design patent as well can be advantageous to provide overlapping protection by protecting the unique design, given the lower cost of obtaining a design patent.
Additionally, design patents have been gaining in strength in recent years.
After court decisions over the last ten years, patent infringement now requires focus on the drawings in total to assess whether an ordinary observer would believe the accused infringing product is a copy.
This makes it easier to demonstrate infringement than the standard courts have used in the past, which required the jury to focus on the point of novelty and not the totality of the drawings.
Using the Apple, Inc design patents, Apple was able to win the day over Samsung in the biggest patent battle to date.
“Jury Awards Apple $539 Million in Samsung Patent Case.” – Business Insider
Feel free go through this SlideShare I found online to better understand this case! Very well, from some college students attending Sampoerna University in Indonesia.
We also further discuss this case in our blog article: “Apple Vs. Samsung: Did the Federal Circuit Change the Law of Obviousness Without Telling Anybody? “
In Conclusion + Bonus Chart!
Utility patents are the most common type of patent used, but design patents are preferable in certain situations.
Design patents have also become increasingly more important with time.
- A utility patent protects the functionality of an invention
- A design patent protects the way an invention, or part of an invention, looks.
Bonus: Resource from USPTO that explains the distinct difference between a design and utility patent. (Click here to see)
…before you even start thinking about protecting & bringing to market your visionary idea please first:
- Understand if your idea is patentable.
- Meet with a patent attorney to further determine your patent eligibility.
- Perform an in-depth patent search.
What did you think of the article? What other questions do you have about utility patents and design patents? Please let me know in the comments below! I am here to help!
Want additional help and a free copy of my Inventors Guide to Patents book for free?!
Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patents. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.