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By J.D. Houvener
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

  1. 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.
  2. 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

  1. 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.
  2. 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.
  3. 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.
  4. 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.
  5. 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.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/