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 – check out Section 2 of a recent Bold Blog article for more details: What is a Patent?
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.
As you will read below, a very important takeaway is that for physical products you should seek protection under BOTH utility and design to protect functionality and design aspects and maximize enforceability.
Please Note: Understanding the difference between Utility Patent vs. Design patents is only one part of the 13-step process in how to patent your idea! We encourage you to learn the other steps by clicking here!
What is a Utility Patent?
In general terms, a utility patent protects the way an invention functions, and how it is used.
More specifically, the functionality or utility that is owned (for up to 20 years) is defined in the numbered claims.
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 a 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, or how an article is used and works, of an article. 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.
Here is what claims 1-4 look like for the above patent (US 7,813,715)
You can see that claim 1 is the longer claim, it has clauses (a) – (e), it’s called an independent claim, because it doesn’t depend on any other claim. In order for Apple to claim infringement on this patent, an infringer has to be shown to be making/using/selling all of elements (a) – (e). If even one of those elements is not present, there is no infringement.
The functionality is a method for wireless pairing, and there are many functions which you can see: “receiving…selecting…sending…”, etc. It requires a “wireless portable electronic device”, “pin codes”, and a few more specific things.
You can see on claims 2-4 that they are shorter, which is usually indicative that they are dependent claims. For example, claim 2 it states, “The method as recited in claim 1, further comprising…” which means that in order to infringe claim 2, the infringer has to be doing everything in claim 1 AND whatever is claimed in claim 2, which is “prompting…alternate code…”
There are even claims like number 4, which is dependent on another dependent claim. Here, this means that in order to infringe claim 4, an infringer would have to perform all of elements of claim 1, all the elements of claim 3, AND all elements of claim 4.
Note, there are some downsides to a utility patent. Utility patents tend to be more expensive and difficult to obtain than a design 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.
It’s important to understand the distinction between the terms provisional, nonprovisional, and utility patents.
It’s easy to get these confused.
There is actually no such thing as a “provisional patent”. There is, however, a “provisional patent application”. The key to understanding this is that a provisional is really just a place holder, and it only bestows a “patent pending” on the inventor/applicant. Such is also true of a nonprovisional (more formal) patent application.
Another point of clarification for utility patents is that you do not have to file a provisional patent application, then a nonprovisional patent application in order to get a utility patent granted. You can file a nonprovisional patent application straight away.
There are no provisional design patents, so if someone says they have filed a provisional patent application, they have filed for a utility patent application.
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.
I put together a fun quick 4 minute video for my inventors describing what a design patent is all about on our You Tube channel, view the video at this link, and a follow-up video here
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 as the initial 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!
The entire claim set states: “The ornamental design of an electronic device, as shown and described.”
That’s it! Now compare that to the patent we looked at up above for Utility Patents, quite a stark difference. The reason is that what controls is not the words, but the drawings – which have an increased importance for design patents. What is in solid lines is claimed, and it is as if each solid line in the design drawing represents a clause/paragraph in a claim set.
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 (on the perimeter of the phone) are what’s claimed in a design application. The dashed lines are not claimed.
The dashed lines are actually a strategic approach. IT actually gives the patent holder MORE rights, because those shapes in dashed lines may take on any form. This held true when Apple took on Samsung in the mega smartphone patent battle. The dashed lines around the circular button on the original iPhone allowed the design claim to cover ovals/ellipses (which is the shape of Samsung’s device).
Another great way to think of what “ornamental” means, is to think of Christmas ornaments.
Think about the ornaments on the tree. What is their purpose? To look good, right? Well, that’s what protection is possible with a design patent – protection ONLY for what something looks like.
Note, that the ornamental characteristics for an article includes its shape/configuration or surface ornamentation applied to the article.
A design patent does not protect the mechanical structure, but rather will protect 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 protect the unique design, given the lower cost of obtaining a design patent.
In building a valuable patent portfolio (just a fancy term for having more than one patent asset), it’s common to file for the utility patent first, and then, if the subject matter is allowed, then file for a design patent application (or several).
This approach of filing utility first, then filing the design, can save you money – as you can wait to spend money preparing/filing/arguing the design until after you’ve had the back and forth with the examiner on prior art regarding the functionality for the utility application.
If an invention has potential novel utility and design, here is usually how i recommend filing:
Patentability Search (confirm patentability)
Provisional Patent Application
Nonprovisional Patent Application + International Applications – (typically via PCT)
Examiner Office Actions
Notice of Allowance (examiner confirms patentability)
File (child) Design Patent Application(s)
File Additional (child) Utility Application(s)
Parent Utility Patent Grants
Child Utility and Design Patents Grant
International Filings for both Utility and Design Applications
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.
Inventors and business owners should protect themselves by working with their patent attorneys to ensure their intellectual property is fully protected. Bold Patents patent attorneys are ready to assist in any intellectual property matters.
Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. 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.