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Volume XI, Number 167

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Form versus Function – Protecting Products with Design and Utility Patents

If you think patents are all about protecting something “technical” or something only a scientist or engineer could appreciate, you are mistaken. Patents can protect how things look as well as how they work. If you want to protect how something works, you need a Utility Patent. If you want to protect how something looks, you need a Design Patent.

Design and Utility Patents

These have similarities, such as the following:

  • Each contains at least one claim telling the public what is protected

  • Each is required to have all the claims protect something new and non-obvious over the prior art

  • Each undergoes examination by a patent examiner in the U.S. Patent Office

  • Each has a fixed number of years of exclusionary rights (meaning someone cannot do what the Utility Patent claims and someone cannot make something look like what is in the Design Patent for a fixed number of years)

  • Each can be used to cover different aspects of the same device

Form versus Function

Despite the similarities, a utility patent and a design patent have some very significant differences:

  • The claims of a utility patent are words describing the structure, function, or method protected; design patents have one claim, and it is the drawings in the design patent

  • Utility patent claims require them to be useful as well as new, and non-obvious over the prior art; design patent claims exclude that which has an appearance dictated by function

  • Utility patent examination in the U.S. Patent Office can take three to four years, while design patents undergo complete examination within two years

  • Utility patents provide exclusionary rights for 20 years from their earliest effective filing date; design patents last 15 years from the date they issue

  • The cost of filing and obtaining a utility patent is between $5K and $8K, while design patent prosecution costs closer to $3K; utility patents require maintenance fees after they issue, whereas no such maintenance/renewal fee exists for design patents

Protecting Your Products

There are some benefits/downsides associated with each of the above similarities and differences that should be understood when deciding which of these two patent rights to pursue:

  • A design patent is much more difficult to enforce in district courts in litigation, and asserting a design patent with a utility patent in litigation can be harmful to the validity of either application; in some cases, the combined use of a design patent and utility patent can make a case even stronger for the patent holder where the patents are sufficiently distinct so as not to overlap

  • Design patent damages are automatically based on profits of the infringer, while utility patents require a much stronger showing to get lost profits if infringement is found; instead, utility patents entitle their owner to a reasonable royalty at a minimum

  • Utility patents can cover the same features as a design patent, but the converse is not true

  • Design patents are potentially easier to enforce by customs where international importation of infringing goods is involved

In deciding which type of patent is right for you, be sure to work with a patent attorney who has written, prosecuted, and litigated both types, so you too can independently assess the benefits/downsides of both. 

©2021 Norris McLaughlin P.A., All Rights ReservedNational Law Review, Volume XI, Number 127
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About this Author

Joseph A. Farco Intellectual Property Attorney Norris McLaughlin New York, NY
Member

Joseph A. Farco focuses his practice on intellectual property matters including litigation, patent, and trade secret transactions.

As a trial patent lawyer, Joe represents patent owners, including inventors, and foreign and domestic companies in district court and the International Trade Commission. He drafts complaints, answers, 12(b) motions, discovery, and discovery motions, as well as takes and defends fact, expert, and 30(b)(6) depositions. Joe handles pre-filing due diligence for patent owners on how to best assert their patents; cease-and-desist correspondence to avoid...

917-369-8865
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