I hope everyone is having a happy Thanksgiving. I searched through the patent office to find patents with a Turkey and I looked through the many utility patents and design patents. This led me to wonder if people really understand the difference between the two.
- Utility Patents: For any process, machine, composition of matter or manufacture
- Design Patents: For any original and ornamental design for an article of manufacture
In general terms, a “utility patent” protects the way an article is used and works ( 35 U.S.C. 101), while a “design patent” protects the way an article looks ( 35 U.S.C. 171). A design patent protects only the ornamental appearance of an article, and not its structure or utilitarian features.
Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
It can be to your advantage to simultaneously file for utility patent protection on the functional aspects of an invention, and design patent protection on the ornamental aspects of the invention.
But if you didn’t file it simultaneously once the utility patent application is in condition for allowance, you may file a divisional design patent application based on the original utility patent application.
Another way to get design patent protection is to file a design divisional if a rejection is received and it doesn’t look as though any of the claims are going to be allowed.
In order to successfully follow this strategy the original utility patent application must filed with design application quality drawings and a brief description of the ornamental aspects of the invention.
What is an inventor’s strategy for protecting intellectual property? Take a look at the examples of the utility and design patents that I posted here.
I doubt if Inventor Roy D. Williams ever sold this ingenious Turkey hunter’s safety placard. And I wonder if anybody ever used the Retainer for dressed poultry invented by Anthony J. Volk.
Both patents have expired and are now in the public domain, so feel free to make, use and sell them if you wish to.
Entrepreneurs should consider using the vast amount of free technology that can be found in patents in the public domain. But I think that’s a topic that will have to be dealt with in a future blog post.
Whether or not these patents are valuable can be determined by answering this question: would anybody have copied these products had they not received a patent?
The courts have ruled that to find infringement of a design patent, the accused product must be compared to the claimed design to determine whether the two designs are substantially the same.
To find infringement, the allegedly infringing product must incorporate the point of novelty of the claimed design.
The standard of infringement involves two stages.
- First, one must determine what the ornamental features of the patented design are and whether one or more of these were appropriated by the product alleged to infringe. If not, there is no infringement.
- If there was appropriation of one or more of the unique features, then a second test is applied. One looks at both the similarities and differences between the two products to determine if there is sufficient overall similarity to deceive the ordinary observer. If so, infringement exists.
The protection offered by design patents is somewhat limited because courts determine infringement by comparing the design patent drawings to a competitor’s “infringing” item. Consequently, the appearance of the drawings is critical in design patents.
Although the answer to the question as to the value of the design patent for the “hunter’s safety placecard” is that nobody would have copied it, many companies recognize the value of design patents in various fields of invention.
For example, last month design patents were obtained in various industries for things like Semiconductors, transistors or integrated circuits, Parts, Accessories And Attachments For Vehicles D626,058 (.PDF) and Jewelry, Symbolic Insignia, And Ornaments D625640(.PDF)
Some of the more common differences between design and utility patents are summarized below:
- The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; while the term of a design patent is 15 years measured from the date of grant (see 35 U.S.C. 173).
- Maintenance fees are required for utility patents (see 37 CFR 1.20), while no maintenance fees are required for design patents.
- Design patent applications include only a single claim, while utility patent applications can have multiple claims.
- An international application naming various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT), while no such provision exists for design patents.
- Foreign priority under 35 U.S.C. 119(a)-(d) can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications (see 35 U.S.C. 172).
- Utility patent applications may claim the benefit of a provisional application under 35 U.S.C. 119(e) whereas design patent applications may not. See 35 U.S.C. 172 and 37 CFR 1.78 (a)(4).
- A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)).
- Duration of the prosecution before the Patent and Trademark Office of a design patent application is significantly shorter than the average pendency of a utility patent application.
- Utility patent applications filed on or after November 29, 2000 are subject to application publication under 35 U.S.C. 122(b)(1)(A), whereas design applications are not subject to application publication (see 35 U.S.C. 122(b)(2)