An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
The patent that you think of when you hear the word patent is a utility patent. But it’s not the only kind of patent that there is. 5% (over 30,000) of all patent applications filed per year are design patent applications. 0.1% of all patent applications filed per year are plant patent applications. From a marketing perspective, that’s why this article is about design patents.
Design patents protect a manufactured article’s ornamental appearance. The protection for ornamental appearance is what differentiates a design patent from a utility patent. 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), and the way that the patents express this protection reflects this difference. In a utility patent, the scope of protection is expressed in a series of carefully-worded claims. In a design patent, there is a single claim that defines the scope of protection according to its drawings. For example, consider the difference between claims for a utility patent (left) versus a design patent (right) for the same product: the iPhone.
While the iPhone utility patent has drawings, its claim scope is not solely limited to the drawings, but instead the claim words themselves define its scope. The iPhone design patent, on the other hand, is limited in scope to its drawings. The design patent thus provides a more narrow scope of protection.
The above iPhone example answers a common question about utility and design patents: Can they both cover the same product? The answer is yes. In fact, multiple design patents may cover a single product, with each one covering the ornamental appearance of a different feature. I could secure on design patent for a watch face and another for the band.
HOW DO YOU INFRINGE A DESIGN PATENT?
Design patent infringement requires proof that an “ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design….If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer.” “The ordinary observer test applies to the patented design in its entirety, as it is claimed. [T]herefore, minor differences between a patented design and an accused article’s design cannot, and [do] not, prevent a finding of infringement.”
It’s this “ordinary observer” test that is at the heart of deciding whether there has been design patent infringement. Here are some examples of cases and how they were decided.
You can see other comparisons in this excellent article.
WHAT OTHER DIFFERENCES ARE THERE BETWEEN DESIGN AND UTILITY PATENTS?
1. Design patents costs less than utility patents. The cost for filing a design patent application is substantially less than a utility patent application, as much as 80-90% less. The majority of the cost of a design patent is in preparing the drawings, which are critical. Due to their narrow scope, design patent applications usually require less back-and-forth with the US Patent and Trademark Office (USPTO), so you will also save attorney fees. Design patent fees due at the USPTO are less than utility patent fees. Finally, design patents do not require payment of costly maintenance fees that utility patents require.
2. Design patent terms are measured differently than utility patents. Utility patents have a term of 20 years from the earliest U.S. application to which priority is claimed. Design patents have a term of 15 years from their issuance (for design applications filed before December 15, 2013, the term is 14 years from issuance).
3. Design patents don’t take as long to get as utility patents. It takes about 2 years to get a design patent on average, but more than 3 for a utility patent.
4. Design patents start with the letter “D” followed by a number; utility patents are just a series of numbers.
Design patents offer a narrow scope of protection but they are less expensive and easier to secure than utility patents. In applying for one, you can use the valuable “patent pending” wording and once you receive the design patent, you can mark your product as patented. Thus, design patents are valuable if your product’s appearance is important to its success. Design patents are commonly filed for shoes, electronic device housings, jewelry, clothing, and automobiles.
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