Design Patents Versus Utility Patents
Clients often ask about the differences between design and utility patents. The phrase “design patent” confuses some people because in everyday usage, the term “design” frequently connotes the structure, function, and properties of a product.
Not so with design patents. Design patents protect the “ornamental appearance” of an article of manufacture. Utility patents protect the structure and/or operation of processes, machines, articles of manufacture, and compositions of matter. Design patents are relatively simple in nature and include a set of drawings, a description of the drawings, and one claim that essentially says that what is claimed is what is shown in the drawings. Utility patents and design patents have different terms. Utility patents expire 20 years from their earliest effective US filing date. Design patents expire 14 years after they issue.
Design patents can be powerful. Many products include aesthetic features that are valuable. We have done quite a bit of work with the footwear industry, which relies heavily on aesthetic features to create value. Like utility patents, the claimed features of a design patent must be novel and non-obvious. While many people perceive design protection as “narrow,” it is also possible to “broaden” a design claim relative to the commercial product by putting unclaimed features in dashed lines.
One limitation on design patents is that the claimed features must not be functional. If the claimed ornamental features are driven primarily by functional considerations, the claim may be invalidated. Without this limitation, design patent applicants could circumvent the requirements for utility patent protection by disguising functional features as ornamental ones and avoiding the type of examination that is performed on utility patent applications.
In addition to design patents, the ornamental features of an article of manufacture may be protected by copyright and as product trade dress. However, in those cases as well, functional features may not be protected. Otherwise, a de facto patent could be obtained without the rigors of the patent examination process.
Some products may be protected with both design and utility patents. The smartphone giants Apple and Samsung have protected their products with both kinds of patents. However, if both types of patents are sought, it is important to segregate the ornamental features from the functional ones and makes sure that the utility patent application is written in a way that respects that distinction.
Unlike utility patents, the examination process for design patents is often much easier and quicker. First action allowances are quite common. While design patents must be novel and non-obvious, the visual nature of the analysis and the generally narrower scope of design patents means that they are often allowed without an office action. However, in drafting a design patent application, it is critical to have good drawings that are consistent from all views. Otherwise, the claim may be rejected for lack of enablement, and it may not be possible to overcome the rejection. If you attempt to correct design patent drawings, the corrections may be deemed “new matter” which is not allowed. Thus, you may have to file a new application.