Notes on Design Patents vs. Utility Patents

A new established concept or realized invention potentially has future economic and commercial value. However, the concept developer (ie, the inventor) may not immediately realize the potential financial returns of the invention. Because of the conversion of an abstract invention into a commercialized product or service, it is important for an inventor to ensure that the ideas and rights related to the invention are protected for a defined period of time.

Article I, Section 8 of the United States Constitution states that, to promote the progress of science, inventors have “exclusive” rights to their respective discoveries. The US Patent and Trademark Office (“USPTO”) is the government entity charged with issuing patents in the United States.

A design patent protects various visual features of an article of manufacture and covers newly invented ornamental design. It protects the appearance of the invention and is comparatively cheaper and quicker to patent. A design patent does not directly protect the functional characteristics of an invention. Therefore, competitors can sometimes get by by changing the general appearance of a patent-protected product. In contrast, a utility patent protects the functional aspects of an invention. A single utility patent can protect many different product variations, thus becoming cheaper in the long run.

However, a situation may arise where the invention has a unique function or structure associated with a unique ornamental design. In such a situation, adequate protection could be provided by a combination of design and utility patents. After due consultation with a patent attorney, applications can be filed for both patents and utility designs.

A design patent application mainly includes a specification and drawings incorporating the figures. The specification includes the preamble, figure descriptions, and single claim. The drawings contain the essence of what the design patent protects. Therefore, drawings must be carefully drafted in accordance with the USPTO’s Manual of Patent Examination Procedures (“MPEP”). In addition, the drawings must indicate the features that the patent is intended to protect, making drawings derived from 3D models (using software such as Pro-Engineer, Solid Works, and CATIA) often useful.

A utility patent application, on the other hand, will include an abstract, the background of the invention, an abstract of the invention, drawings, brief descriptions thereof, a detailed description of the preferred embodiment(s). ) of the invention and multiple claims.

Although there are conceptual differences between design patents and utility patents, the substantive processing of design and utility patent applications is similar, and both types of applications will face a novelty and obviousness test at the USPTO. This makes obtaining an opinion of patentability or infringement prior to filing an application very careful.

Infringement of a design or utility patent occurs when the exclusive rights granted to the patent owner are violated. Infringement of a design patent generally depends on whether the charged design and the patented designs are substantially the same. Infringement of a utility patent typically depends on whether the patent claims literally “read on” the accused invention or whether the differences between the accused and patented products are insubstantial.

Whether an invention is patentable and whether it is infringing are separate but related issues. An invention that conflicts with an enforceable patent will not itself be patentable, although an invention may not be patentable and may also not be at risk of infringing another patent (for example, all the patents it covers may have expired). In the event that an inventor realizes that his product is unlikely to be patentable, it may be prudent to issue an infringement opinion to ensure that there are no patent trolls waiting for him.

Any inventor or aspiring entrepreneur who is considering purchasing patent protection, or wondering if it is necessary, should speak with a patent attorney who can take the necessary prophylactic steps to ensure that they are covered in either case.

Leave a Reply

Your email address will not be published. Required fields are marked *

Back To Top