Do You Need a Design Patent or Utility Patent?--4 Questions to Help You Decide

Apr 23, 2019

There are several different kinds of U.S. patents: utility, design, and plant. Plant patents are self-explanatory and rarely misunderstood, so we’re not going to address them here. However, design patents and utility patents can be frequently confused. In fact, we see many people who can’t figure out whether they should get a design or utility patent… or perhaps both! Here’s a quick guide that can help you determine which one is best for you.

Design Vs. Utility Patents

According to the USPTO, “A ‘utility patent’ protects the way an article is used and works, while a ‘design patent’ protects the way an article looks.” Utility patents are generally known as the most valuable, and hardest to obtain. Design patents, on the other hand, are more likely to be approved and cost less to apply for and maintain. However, they also provide more limited protection. A utility patent will protect your invention from infringement, whether your competitor’s product looks different, or is even applied differently from what you originally intended. As long as the functionality is the same, your intellectual property is protected. A design patent, on the other hand, only protects visual aspects. As such, it is often used for fashion and distinctive branding.

However, design patents have become both more popular and more powerful in recent years. This can largely be attributed to high-profile court rulings that have set the groundwork for stronger protection against infringement. One example of this is Egyptian Goddess v. Swisa, a 2006 case wherein the United States Court of Appeals for the Federal Circuit established the “ordinary observer” test to see if people would judge a design to be the same through casual observation. This is generally thought to improve the odds of being able to prove design infringement, and thus design patents have gained more weight since then. Another landmark ruling that reinforced the protection of design patents is the case of Samsung vs. Apple, which occurred just last year. In this case, all of Apple’s design patents were validated when the court awarded Apple $539 million, paid out by Samsung in penalty of their imitating Apple’s patented smartphone designs.

4 Questions to Help You Determine What Kind of Patent You Need

Although the definition of the two different kinds of patent seems straightforward, it can actually be more complicated when you look at a specific invention. The whole point of your innovation is that it’s completely new, and therefore, might not fit in a pre-defined box.

However, there are some questions that can help you get clarity about what kind of protection you need for your intellectual property.

  1. What is the most unique and special aspect of your product? If you’re describing it to someone, do you use words like “sleek, beautiful, looks” or words like “works, more efficient, technique?”
  2. What are you most worried about others imitating? This can help you determine what aspect of your invention is the most original and valuable.
  3. If you continued to create products in this vein, would you continue to develop modifications on design, or on the function? Many design patents protect a series or product line, pointing out similarities and marking those characteristics as branded. On the other hand, if the appeal of your innovation is in the utility, you will probably continue to refine and adapt that utility as needed.
  4. Is there something already on the market that works in the same way? Are you adding to the function of that device, or simply changing the aesthetics? Patent search helps you evaluate pre-existing art that resembles your product and can help you determine what unique value you’re adding to what already exists out there.

Making the Call

In the end, your decision to apply for either a design or utility patent will come down to the specifications of your innovation. As mentioned above, it’s important to note that the protection offered by a design patent isn’t as wide, but it’s easier to obtain. Many utility patents can also be complemented by a design patent. Some innovators choose this route in order to expand their protection. It can be a wise move, as a faster turnaround time and easier application process allows them to use the coveted terms “patented design” and “patent pending” even before a utility patent is issued.

Here at Global Patent Solutions, we offer premium patent search, whatever form of patent you have in mind. In fact, a patent search can give you valuable information that helps you decide which approach to take in your patent strategy. Contact us today to learn more.



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