“Form follows function” is a famous axiom in the world of architecture. In the world of patents, form and function are the defining characteristics that separate two distinct types of patents: utility patents and design patents.
Both utility and design patents provide valuable protections for patent owners, but there are significant distinctions between them. Determining which is best suited for your invention will affect what your patent protects, how much the application process will cost, and when and whether the U.S. Patent and Trademark Office (USPTO) will issue your patent.
If you are an inventor or entrepreneur seeking the rights and protections a patent provides, here is what you need to know about utility and design patents.
A utility patent protects the functional elements of an article; that is, how it is used and works. To obtain a utility patent, the invention must be “novel, non-obvious and useful.”
Those three terms have very specific meanings in patent law, and if your invention does not hit all those marks, the USPTO may deny your application for a utility patent.
- Novel: You cannot patent an invention that already exists. An article must not have been known or used by others before the inventor created it. However, improvements to an existing invention may be patentable.
- Non-Obvious: Even if an invention differs from an existing invention so that it is “novel,” a patent will not be issued if that difference is obvious “to a person having ordinary skill in the art to which the claimed invention pertains.” Determining whether an invention is obvious involves several complex factors and can be a very involved aspect of the patent prosecution process.
- Useful: You cannot obtain a patent for an item that doesn’t actually do anything. A claimed invention must have a “specific and substantial utility.”
Many patentable items will not only do something; but will look like something. A design patent protects what an article looks like, i.e., its unique exterior appearance, such as its shape, configuration, or surface ornamentation. For example, you could obtain a design patent for a new shoe tread, car design, or beverage container shape. The key for a design patent is that it relates to a visible, exterior aspect of the invention.
Other Key Differences Between Utility and Design Patents
Utility and design patents not only cover different aspects of an article, but the application process and protection each type of patent provides are distinct.
Typically, utility patents are much more difficult to obtain, and the USPTO’s review process of a utility application can take much longer than for a design application. The analysis involved in determining whether the functional aspects of an article satisfy all of the elements required for a utility patent includes a great deal of detailed, scientific, and technical analysis compared to reviewing an item’s ornamental appearance for a design patent.
That is why the typical pendency of a utility application is about two to three years, while the pendency of a design patent application is about one to two years.
Utility patents are valid for generally 20 years from the application filing date, while design patents are valid for generally 15 years from the date of patent issuance. And while a utility patent owner must pay periodic maintenance fees to prevent patent expiration, no additional maintenance fees are required to maintain a design patent.
Which Type of Patent Is Right for Your Invention?
You can apply for both a design and utility patent for an article if the invention’s novelty resides both in its utility and its ornamental appearance. Given the lengthier and costlier application process for utility patents, many inventors move forward with only a design patent application. The best way to determine your patent prosecution strategy is to meet with an experienced patent attorney.
If you would like more information about utility and design patents or would like to discuss applying for a patent for your new invention, please contact the attorneys at The Dobrusin Law Firm.