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By J.D. Houvener
Patent Attorney and Founder

Hey everybody, we’re talking about design patents versus utility patents. What’s the difference?

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Alright, I’m J.D. Houvener, a registered USPTO patent attorney, managing partner, and CEO here at Bold Patents 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. Take a look, pretty cool, right? All the rage. So, an Apple Watch is a smartwatch, as many of you know. But did you think, what is it that caught your eye? What is it that made you want to purchase? Was it the way that it looked, or was it what it did? Both of those have different implications, and that’s why Apple is the holder of over 110 patents that cover the Apple Watch both in the way that it looks under design patents 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. Alright, 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 patent 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 legally compounded, and the terms are very, every single word is chosen 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 file a provisional utility app? Can you file a 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 it’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, the non-provisional must be filed. Unfortunately, that’s not the case for design patents. 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. What are we looking at for a utility app? They’re generally high. Okay, you’ve got to provide an order of $500 to $1,000, in some cases, $2,000 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. Not that that goes for both the bigger and 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, patentability searches are way more effective for utility patents than they are for design patents.

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 and get some ballpark estimates. On the Utility side, I like to say between $5,000 and $20,000. Okay, that’s to get the full formal utility application submitted with the examiner. On the design side, figure between $2,000 to $7,000, 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 range, but it should help you kind of get in the right ballpark.

So let’s take a look at office actions. Alright, 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. 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 find 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, there’s some formalistic objection to what’s being presented. That’s called an office action. 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, 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 after filing? Alright, 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. It really depends on 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 to actually get the patent through? Utility patent applications can vary quite a bit, and so it’s anywhere between one year to four years, okay? Typically, what I tell inventors is the more tangible, 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. Alright, 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 it was issued. So, the difference is really pretty marginal. You get 15 years from the moment it was issued, regardless of how long that design patent was pending while it was being examined. Alright, 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, is an alleged infringer 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?

Alright, 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 boldip.com, visit our blog section on there. You can write detailed comments, and when you’re ready to file your design or utility patent application, book a free 30-minute consultation with one of our advisors today. Alright, 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 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, alright? Because what happens under a 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 boldip.com. 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, given 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 J.D. Houvener, managing partner and CEO here at Bold Patents 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 bold. Go big, go bold.

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/