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By J.D. Houvener
Patent Attorney and Founder

Hey everybody we’re talking about design patents versus utility patterns what’s the difference


all right I’m JD Governor a registered USPTO patent attorney managing partner and CEO here at bold Patton’s Law Firm I’m stoked to talk with you about what the heck the difference is and what it means to you which one should you choose and maybe you should choose both cool example for you is right here on my wrist this Apple watch right take a look pretty cool right all the rage so an Apple Watch is a smart watch as many of any of you know but did you think what is it that caught your eye what is it that made you want to purchase that was it the way that it looked or was it what it did both of those have different implications and that’s why apples is the holder of over 110 patents that cover the Apple watch both in the way that it looks under design patent and what it does under Utility Patent applications So today we’re going to break it down we’re going to talk about every single aspect that I can think of and maybe if I don’t feel free to comment ask questions if we don’t get to that all right hold me accountable so let’s March through what the differences are right up front I mentioned this probably already but what does it protect okay the utility pad application a patent on a utility protects what something does ever looked at an actual patent document you’ll see after you scroll all the way down to the bottom there’s a numbered set of claims very very legally compounded and the terms are very every single word is chose on purpose they’re crafted the reason why they’re that way is because they want to protect what that invention does I’ll start it up it protects how the invention Works functionality what does a design patent protect you from it protects the way that it looks Aesthetics the ornamentation of the edges the shapes the curves the proportions but not what it does okay those are big differences second what is a provisional apply toward can you have can you follow provisional utility app can you follow provisional design and the answer is yes you can file a provisional patent application for a utility application but you may not file a provisional for a design just the way the laws are set up as you may not know the provisional patent application is one that really functions to preserve that time you may not have figured out all the details of your invention yet and you’re not certain that’s going to do well in the market a provisional is a great option it’s less formal it doesn’t require a claim set it doesn’t require to be structured in a certain way and be formalized and the drawings can even be informal this is usually done after performing a patentability search that’s highly recommended that a search be done before filing even a provisional but it will lock in your application and the ability for you to then file the non-provisional full utility app one year later so you have a full 12 months from filing the provisional from the non-provisional must be filed unfortunately that’s not the case for design pads you don’t get that option the patent office and the law is set up that if you’ve got a novel aesthetic ornamental design you’ve got to file it full up when you’re ready next aspect is fees USPTO fees uh what are we looking at for a utility app they’re generally High okay you’ve got to provide an order of 500 to 1000 in some cases two thousand dollars depending on the size of your company if you’re an individual filer it’ll be on the lower end of the spectrum if you’re an ongoing big business with more than 500 employees you’ll pay the higher sticker price on the design side you’re going to pay a lot lower fees okay not that that goes for both the uh with the bigger small entities you’re going to pay a much lower fee in hundreds of dollars versus thousands take a look at the search how effective is a patentability search for utility applications very effective you’re going to describe and use keyword searching on your invention almost to no end right you can conduct that search until you’re blue in the face and get a lot of really good data you’re able to find out who your competitors are confirm whether what you have is really not on the design side it’s tougher you’re dealing with images and shapes way more difficult to search than to find English words so handability searches are way more effective for utility pads than they are for design pads looking at the attorney’s fees okay how much work is involved for US patent attorneys on the Utility side versus the design side well I have to say that the Utility side is going to be a ton more work I mean on order of double the amount of work to fill up a complete Utility Patent application versus getting the design done which the actual words on a design patent application are typically just one maybe two pages it’s all about the figures and the drawings okay so that’s the big difference I wanted to take a little break here and see if you’re enjoying this information you’re loving this breakdown between utility and design if you are please give us a like don’t be shy give us a comment as well if you’re not really following me if you want some clarification on some subject matter put it down or if you’re loving us give us a la la right and Pay It Forward share this video with one of your friends that you think is also an inventor or moving in that direction nudge them along and get it going okay let’s get back to it so let’s talk about the fees okay I’ll give you a little bit of a range I know everybody’s hoping to get some dollar signs um and get some ballpark estimates on the Utility side I like to say between five and twenty thousand dollars okay that’s to get the full formal utility application submitted with the Examiner on the design side figure between you know two to two to seven thousand dollars okay somewhere in that range depending how intricate the ornamentation is on your design it’s going to vary a lot so I know there’s a big big ranges but it should help you kind of get in the right ballpark so let’s take a look at office actions all right so some of you may not even know what an office action is but after you submit your patent application with the USPTO it’s going to get assigned to an examiner and an examiner is going to do their best to conduct a search Worldwide search to confirm novelty non-obviousness and make sure you have utility if it’s a utility app on design side novelty and non-obviousness when they conduct their search they might find something right they might something that’s close enough to your invention where they might reject it or they might find a reason to object to the drawings maybe someone messed up on the drawings and it’s not labeled right right there’s some formalistic objection to what’s what’s being presented that’s called an office action and so what happens is oftentimes there’s a need to respond and the inventor is going to need help from a trained professional patent attorney to respond to that office action so what is the likelihood of getting an office action at all well with the utility application it’s going to be a lot higher than with the design typically it’s a lot harder for an examiner to find exact prior art or a design they’ve got to find something exactly or just a little bit different right within the realm of your actual ornamentation on the Utility side it’s English words it’s quite broad if you’re going for quite a bit of subject matter and it’s way more easier to search as I mentioned earlier uh for the examiner too so they’re likely going to find more reason to object to your invention in an office action for utility than they would for a design okay so what’s the attorney fee you know after filing all right so look thinking about office actions what’s the fee to help you with those if you actually do get an office action on the design side it’s about half as much you know one to three grand on the Utility side two to six really depends on how ex how extensive the rejection is and how much work it’s going to be to provide legal argument and amendments to overcome that examiner rejection so how long do you get right how long does it take the tax actually get the patent through Utility Patent applications can vary quite a bit and so it’s anywhere between a one year to four years okay typically what I tell inventors is the more tangent right the more Hardware specific something you can touch and feel that might get through the office quicker than something that’s more intangible think about you know computerized methods and processes that could be on the upper end three maybe even four years in tendency depending on how hard you fight and how much legal argument you partake in with the examiner on the design side one to two years is really kind of the upper end of how long it should take to get the patent through so it’s going to go through I would have to say that if you’re going to do one or the other if time is of the essence go with the design patent application and how much do you get right what’s this exchange we’ve talked about this quid pro quo before you may have heard of what’s the government giving out in exchange for getting your brilliant idea and you sharing it with the world well for utility patents it’s 20 years design side it’s 15 years what’s interesting though is that on the Utility side it’s 20 years from the filing date all right so it may take you three four years to get through that means you only have 16 years maybe 17 years of issued you know a defensible enforceable rights the design patent the 15 years that starts at the moment was issued so the difference is really pretty marginal you get 15 years from the moment was issued regardless of how long that design patent was pending while it was being examined all right last but not least let’s take a look at how hard it is to determine whether the claims are being infringed you’re going to be able to look on the Utility side at the claims you’ve got to see an alleged infringer are they actually reading on the claims are they doing are they selling and making and using your invention as written in the utility claim set on the design side you’re looking at the drawing right is what they’re selling truly substantially similar to that design you’ve articulated and claimed in solid line all right we’ve talked about design patents a lot so please encourage you to go visit our blog and read a lot about this in detail about what the difference is between utility and design patent applications visit visit our blog section on there you can write detailed comments and when you’re ready to file your design or utility pad application book a free 30-minute consultation with one of our advisors today all right litigation litigation costs tend to be quite lower on the design side than they are on the Utility side because again the complexity of a Utility Patent application and Pad is truly more complex on the Utility side than on the design side now one question that I just I wanted to ask you all along is if you please give us a like thumbs up or share this video with someone that you might know if this information is valuable to you at all right in my efforts in trying to communicate this to you and you’re loving it you’re liking even part of it please help us get this word out one thing I want to mention before we close is that in many cases it’s true that much like apple right and their airpods they do both right design and utility it doesn’t make you have to pick one or the other if your invention has a new and novel shape a new and novel way that it looks right and on top of that has a functional benefit right a new function that it provides you ought to get both all right because what happens under Utility Patent is you don’t get to protect the way something looks and on the design patent side you don’t get to protect the way something functions so they work together extremely well it’s been my pleasure here talking with you about the difference between design and utility patents I want to again impress upon you the free resources that we have on our website at bold we’re hoping to engage you the inventor we want to help promote bring up and inspire you to chase your Visionary dreams and make them come true please check out our book here give it away for free on our website bold ideas the inventor’s guide to patents it’s available for a free pdf download on our website I’m JB hoopner managing partner and CEO here at bold Patton’s Law Firm it’s been my pleasure talking with you here today about design and utility patents have a wonderful day everybody go big go bowl

go big go bro

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