Patent Attorney and Founder
It’s easy sometimes to be long-winded in the law… so, here’s the short and sweet answer:
- 20 Year Monopoly: A utility patent gives an inventor (or their assignees) exclusive rights to prevent anyone else from making, using, selling or importing their invention for 20 years from the earliest filing date.
- Protects Functionality: Utility patents protect an invention’s functionality (e.g. what it does, as opposed to what it looks like – which is what design patents cover).
- All About the Claims: The scope of the rights is determined in the claims.
Now, these are the answers, but in order to more fully appreciate these, I have laid out detailed answers to the top questions I have received on utility patents:
- What is the difference between a utility patent and design patent?
- What is better, a utility patent or design patent?
- How much does it cost for a utility patent?
- How long does a Utility Patent Last?
- What rights does a Utility Patent Owner have?
So without further ado, let’s get started!
What is the difference between a utility patent and a design patent?
I actually have answered this question in GREAT length in a special blog article written just a few months ago – follow this link if you want to learn more: Utility vs. Design Patents.
The heart of that article can be boiled down to a simple chart that I made:
- Protection: utility patents protect what your invention does whereas design patents protect solely how it looks and the ornamental characteristics (shape, orientation, position) of the invention. Click here for a full tutorial on how to file a design patent application.
- Provisionals: Are only available for utility patent applications. There is no such thing as a provisional design patent. A provisional patent application is a placeholder, which MUST be followed up by a nonprovisional patent application within one calendar year to the date, or else the application will go abandoned. Read here for more on provisionals.
- USPTO Fees: Because there are often two steps required for a utility patent application (provisional and nonprovisional) and there is usually more prosecution (back and forth argument and office actions while the application is pending), the USPTO fees are higher. Also, for utility applications, there are maintenance fees that will be due after the patent is issued, whereas design patents require no maintenance fees.
- Patent Search Effectivity: This is based on the fact that words are easier to search than images. Now, this is an evolving phenomenon, with Artificial Intelligence getting better… but for now, the tried and true search methods, filtering and classifying is all based on english words and the ability for researchers to parse technical terms. For this reason, a patentability search is FAR more efficient and effective for utility patents than for design patents.
- Attorney’s Fees (Pre-Filing): Utility patent applications are more costly in general than design patent applications. The amount of effort required by the patent attorney is minimized in a design patent to just a few pages. This is mostly due to the fact that a detailed search is usually performed for utility inventions, whereas design patents – no search is performed.
Note, the key aspect of a design patent is (as you may have guessed) the drawings. While some Patent Attorneys draft their own drawings, it is a SMALL minority of them. In large part – Patent Attorneys rely on professional patent drafters that specialize in portraying the invention in the best way possible to maximize the rights and to conform the the USPTO rules under 37 CFR 1.84.
All in all – the less Patent attorney time, the less expensive. I say this because some utility inventions are quite simple and some designs are very complex requiring many drawings and consideration.
- Office Actions: Office actions are when the USPTO patent examiner that is assigned to the patent application (after it is submitted) reviews the prior art and determines there is something wrong with the patent application. They can deny the patent for either a 1) rejection or an 2) objection.
Rejections have to do with the merits of the case (meaning something more serious), where as objections are formulaic and usually the format/information is incomplete/missing. Rejections come in all sorts of flavors/complexities, but in general the design patent rejections are easier to grasp and form legal arguments or make amendments.
This is just because the brevity of most design patent applications – the argument will be solely about the drawings. In Utility patent rejections, there is more ambiguity, more room for argument, and an expansive way in which the claims could be amended using the english language.
- Attorney’s Fees (Post-Filing): This is really the amount of time that is needed to respond on the inventor’s behalf for office actions. Thus, because there are more office actions that are generally more complicated for utility patent applications, the cost for attorney’s fees will be higher for utility patent applications.
- Time Pending: For many of the reasons listed above, because utility patent applications are more involved and include expansive specifications (written descriptions) and very complex claim language, it takes longer for the examiners to read them and to conduct novelty searches for them, thus longer to examine them. Utility patent applications can take years to be issued, whereas design patent applications are usually resolved within a year.
- Patent Term: utility patents have a term of 20 years from the earliest priority filing date. And as discussed above, it can often take 2-3 years to get through the patent office. Therefore, once the rights are granted, a utility patent owner can enjoy roughly 17-18 years of protection. Design patents are 15 years after grant regardless of when it was filed.
- Determining Infringement: With Design patents, the rights that the inventor (or any assignee) owns is actually contained in the drawings. It is the solid line in the drawings that controls the overall shape/ornamental qualities that make up the rights.
For utility patents, the rights are in the words that make up the claimset. The legal standard for design patents is an “ordinary observer” test [Here’s a fun article on the nuances of the term], meaning “would an ordinary observer think that the infringing product looks like the patented product?” For utility patents, every element of at least one claim must be infringed.
- Costs of Litigating: This one is a close call. As I mention below, more infringement actions are being brought under design patent rights, and therefore it could be argued that due to the increase in overall litigation in design patents, these costs are higher.
However, the vast majority of issued patents are utility patents still, and the actual work involved in substantiating a utility patent infringement action are larger. There can be take months like with the Markman hearing, which is an entire part of the case where terms are defined/interpreted called “construing the claims”.
As you can see – these 11 categories really showcase the core differences between the two types of patents you can get at the USPTO (small note, you can get plant patents, too, which are quite rare).
Another key takeaway here is that it doesn’t have to be either/or; it can be both/and! Meaning, for many inventions, there are novel functionality AND design aspects. Thus, BOTH patent types should be pursued.
An example that I used a lot is the iPhone. This was protected by several utility patents as well as design patents. Read here about the .5 BILLION dollar settlement which was based on a design patent.
Now, if you’re going to choose one to proceed with first, I’d recommend the UTILITY. This is because a patentability search can be performed MUCH more comprehensively on the functional/novel keywords of your invention as opposed to trying to find images/pictures/drawings using the design/shape only.
What is better, a utility patent or a design patent?
It depends on your invention, of course! Are the most novel aspects of your invention what it DOES or instead what it LOOKS like? If it’s what it does, then a UTILITY patent protection will be better. If it’s what it looks like, then a DESIGN patent protection will be far better.
Now, you may not know whether the functional aspects or the design aspects are novel.
If you don’t know, or aren’t sure… then hire a Patent Attorney to conduct a professional search for you based on your assumed novel keywords and design aspects.
The search will reveal patent and non-patent literature that is relevant to your invention. Now, by “non-patent literature” I want to be sure we’re on the same page. This is any published piece of information that is related to your claimed invention. It could be available on any public internet website, traditional print publications/journals/newspapers, audio publications and more. Oh yeah… and this is worldwide.
So, a professional worldwide prior art search is no joke. If you want to get familiar with the patent search database, you can do so following this link here. Also, the USPTO has a great resource for non-patent literature searching here.
So, the answer to this question is still that it depends on what is unique about your invention, and now you know that in order to determine what is “unique” you’ve got to perform a thorough patentability search and get a legal opinion. For a full tutorial on how to perform a 6-step patent search click here.
How Much Does a Utility Patent Cost?
Utility patent applications generally range from $10,000 – $40,000+. I go into the step-by-step for the costs in a separate article here. In that article, I cover the major component to understanding the legal costs involved: How much of the Patent Attorney’s time is required?
Each of the steps below is considered in great depth in the above article:
- Initial Consultation
- Patentability Opinion
- Drafting/Filing Patent Application
- Post-Filing/Office Actions
There are other aspects to consider before investing in a patent, which includes the costs to maintain it afterwards. Here is a link to the current USPTO maintenance fee schedule. And, here is the site for actually paying the fee.
In addition to maintaining the patent rights – the MUCH bigger cost is ENFORCEMENT. Now, enforcement of patent rights is considered a litigation cost, but these include the following bullets:
- Validity Analysis
- Infringement Opinion
- Letter Drafting/Responding
- Settlement Negotiations
- Licensing/Sale Contracts
- Federal Court Litigation
- PTAB Litigation
Validity Analysis is a necessity for most every patent holder that may be on shaky ground with their issued patent based on Supreme Court or Federal Circuit decisions on the law that occured AFTER their patent was granted.
The analysis will dive into the subject matter which is being claimed as well as the wording and relate it to the recent court decisions and law changes. For many computer-implemented inventions – after the landmark ALICE CORPORATION PTY. LTD. v. CLS BANK INTERNATIONAL ET AL. case was decided in 2014, THOUSANDS of patents that were already issued patents (most from the early 2000s) were struck down and deemed “abstract ideas”.
There is a decent article about the overall costs of patent litigation – based on a read of the AIPLA (American Intellectual Property Law Association) study from 2014.
Now, this may seem daunting… you’ve got to put up $500k in order to win $1M? Yikes… well, there is at least some solace in knowing that VERY few patent cases (only 2%) actually go to trial.The other 98% settle out of court because no one wants to pay the attorneys all of that dough!
How Long Does a Utility Patent Last?
The short answer: 20 years from the earliest non-provisional filing date. This means that filing a provisional doesn’t hurt you in terms of your overall length of ownership rights.
This sounds simple, but there are MANY layers to it, and for just this reason, the USPTO has actually created a “Patent Term Calculator” to help. You can access this calculator and the explanation of how to use it here.
Here is what the calculator looks like (in Google Sheets version):
Let’s look at an example patent in order to see when it will (or when it did) expire. US Patent Number 7,079,292.
I’ve highlighted the key areas of the patent you will want to focus on in order to determine the term remaining from the front cover page:
- Patent type
- Filing Date
- Grant Date
- Priority Claim
- Term Adjustments
- Term Extensions
- Type of Patent: Upper Right; you can tell by the “US 7,079,292” that this is a utility patent, because it doesn’t have the distinctive “D” before the numbers (which would signify a design)
- Filing Date: Middle left Column; you can see the date is November 4, 2004
- Grant Date: Upper Right; July 18, 2006
- Benefit Claims: Large block Middle/Lower Left Column; Discussion of continuation applications as far back as November 9, 1999. Also, there is a foreign priority date priority back as far as November 9, 1998.
Based on the rules for patent term and using the patent term calculator shown above, the 20 year time period starts on the non-provisional filing date (November 9, 1999), not the provisional or foreign equivalent of a provisional (November 9, 1998). Therefore, the 20 year expiration for this utility patent will be on November 9, 2019!
The quick assumption about this 20 year rule is that people would think to see the 2006 patent grant date and think ok – they have rights until 2026. And if you do that… you’d end up 7 years off! Don’t let that happen to you.
What rights does a Utility Patent Owner have?
When you get the patent granted, you are bestowed NOT a sword, but a shield!
You gain the ability to prevent anyone else from making, using, selling or importing your invention into the jurisdiction for which you have patent rights.
Let’s assume you have a US Utility Patent granted, and let’s stick with the example from above. You’re the OWNER of US Patent 7,079,292.
So, by the title “Modular Mobile Phone with Integrated Printer” and even the images, you’d be able to cover ANY phone with printer combination…but this is WAY too broad.
The RIGHTS that a utility patent owner has is NOT in the title, the drawings or the specification… it is within the claims. So, here is the claimset (which is WAAAAAY at the bottom of the patent). THIS is actually what the patent owner has rights to prevent others from making, using, selling or importing.
Let’s take a peak at just independent Claim 1 (by the way, if you want to learn ALL ABOUT PATENT CLAIMS, you should ready my article here). You can see that the claim contains at least: 1) Printhead; 2) Support Chassis; 3) Battery Module; 4) Entrance/Exit Slots. Now, if you could conceive of a mobile phone that can perform this function without those 4 elements, then you would not be infringing!
Let’s use this example to explore more fully the 4 rights of utility patent rights: Making, Using, Selling and Importing:
- Excluding others from Making your Invention: This means that no one within the U.S. is allowed to even make the phone with the integrated printer. Now, remember, it’s not just ANY phone with an integrated printer, but the type that is CLAIMED (as shown above). So, the making of a mobile phone itself is not prohibited.
However, as soon as you combine the 4 primary elements of the independent claims, now you may be infringing. Moreover, there can be infringement found even when multiple parties are conducting the behavior. This is called contributory infringement, where one party makes the phone, one party the battery and the final party combines them all. If it can be shown that earlier parties upstream contributed to the infringement, they can be liable as well.
- Excluding others from Using your Invention: This of course occurs after the invention has been made – which could be by an infringing manufacture. But ignoring the making (as described above), just the act of using the invention is infringement if it is done so without permission, license or waiver.
- Excluding others from Selling your Invention: Selling and offering to sell are actually deemed to be equivalent in this context. If a party is making money either directly or through 3rd parties by selling your invention, they are liable for infringement. You have the ability to prevent any sellers from selling your product in the US.
Now, this can get a little complicated with it comes to online sales. If the party doing the listing/selling is outside of the jurisdiction (example a Chinese resident selling online the integrated phone-printer), the activity of selling is not an infringement.
- Excluding others from Importing your Invention: This will prevent overseas manufacturers who are attempting to sell goods that are patented in the US from entering through customs. The enforcement body that helps inventors and patent holders is the International Trade Commission (ITC), and they have tribunals (Article 3) to adjudicate and make customs import/export decisions based on intellectual property arguments.
In Summary
Hopefully this helps you to better understand the core of utility patents and what they can protect!
As mentioned, this is definitely the patent I personally prefer and recommend based solely on its nature when compared to design patents. To get on board and see where I’m coming from, just remember:
- The difference between a utility and design patent
- Which patent type is better for you
- How much a utility patent costs
- How long a utility patent lasts
- What rights you have as a utility patent owner
Now you’re ready to start on your patent journey! Do you think a utility patent will work best for your invention? Let us know your thoughts!
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 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.