Design Patents: The Most Underused Gem

Most people believe that they are obligated to file a utility patent when they invent a device, gadget, or even software application. While utility patents are important, inventors tend to ignore the benefits offered by design patents.

Different types of patent applications

Utility Patents

As the name suggests, anything of utility or functionality can be filed as a utility patent application. Thus, a utility patent application relates to the function the invention performs as opposed to how the invention looks. A utility application can be filed as a provisional (think temporary) or non-provisional (think non-temporary) patent application. As the name suggests, a provisional application is not a “patent,” but rather only reserves the date from which the invention is recognized. Provisional applications are not examined by the patent office and a subsequent non-provisional application is required for examination and eventual grant of a patent.

Design Patents

Design patents relate to the “look” of an invention. Think of a photograph or screenshot of your invention. Through a photograph or screenshot one cannot determine the functionality of the invention. Thus, a design patent limits your intellectual property rights to how the invention looks, instead of the functionality performed by the invention. There is no such thing as a “provisional design patent application.”

Compared to utility patent applications, design applications are cheaper to draft and file. They also have a lower rejection rate than utility applications.

Advantages of Design Patents

As can be noted, design and utility patent applications protect different aspects of ones intellectual property rights. Thus, more often than not both types of applications complement each other. Inventors can take advantage of design patents when they want to protect the ornamental value of an invention and utility applications when they want to protect the functionality of the invention. Often filing both types of application can be advantageous.

For example, a design patent can be filed for a user-interface, icon, glyph, etc. as well as any tangible (physical) invention along with a utility application. By doing so, inventors can protect both the look and the functionality of their inventions. Enforcing design patent rights also tend to be easier than utility patent rights since the discovery process during litigation of a design patent is easier than that of a utility patent.

Conclusion

Design patents can complement utility patents and can be used as a strategic tool to fully protect all aspects of an invention. Design patents are cheaper to procure than a utility patent and are, comparatively, easier to obtain.

Originally published at https://www.clfip.com on October 9, 2019.