Utility patents get all of the publicity in when discussing innovation. This could be changing with Apple’s $1.05 billion verdict against Samsung, which was based in large part on infringement of Apple’s design patents.
Another option that an inventor may want to consider is a design patent. Utility patents cover structural and functional aspects of an invention, while design patents cover the asthetic features.
Design patents differ from utility patents in a number of basic ways. A design patent is granted to cover the ornamental design of an object that has practical utility. For example, a design patent may be obtained for a new shape of a beverage container, the particular shape and features of the tread of a shoe, computer icons, and other items that have practical utility.
A design patent is not permitted for something that exists for purely aesthetic reasons, such as a work of art. A painting, sculpture, or other work of fine art would be protectable by copyright and possibly other intellectual property rights, but would not be eligible for design patent protection.
An invention may be entitled to both a utility patent and a design patent since a utility patent protects the structure of an article and the way it is used and works; a design patent protects the way an article looks. If the design–the way the article looks–is dictated primarily by the article’s function, it would not properly be the subject of a design patent. An example may be the shape of a gear that is designed primarily to fit with other gears and not for aesthetic purposes.
The requirements for obtaining a design patent are similar to that for utility patents. The design must be novel and non-obvious; the examiner will perform a search of the prior art to be certain that the design meets these requirements. Furthermore, the drawings must clearly show the features sought to be protected by patent. The drawings will typically be more detailed than in a utility application as they will often show more views of the invention. The drawings contitute the claims of the design patent. Because they don’t require a detailed specification like a utility patent, design patents are also less costly to prepare and file.
Design patent protection lasts for 14 years (shortly to increase to 15 years) from the date the patent issues compared to 20 years from the earliest filing date for a utility patent. No maintenance fees are required for design patents.
Another advantage of design patents over utility patents is that they seem to be much easier to obtain. In recent years, design patents have had an allowance rate of about 90% over the last few years, compared to utility patent allowance rates of under 50%. Over 80% of design patent applications are allowed without rejection; only 1.2% are rejected based on prior art with a larger number rejected on formality grounds.
In an era of increasing backlog and pendency of utility applications, more than half of design patents are pending for less than a year, with the average pendency being about 16 months.
For an invention where design and utility patent protection are both appropriate, I would not skip the utility patent. An inventor should at least file a utility application for its broader scope of coverage and should also consider a design patent. A design patent would provide some protection while waiting for a utility patent to issue. They are also cheap since they don’t involve a great deal of preparation and prosecution. Inventors should always consider whether their inventions are eligible for design and utility patent protection.