15 Tips: What are the Differences Between Design Patents and Utility Patents?
15 Tips: What are the Differences Between Design Patents and Utility Patents?
Many inventors and companies know how important it is to protect their inventions, but are usually confused and left wondering what type of patent to file for. As is explained over at runrex.com, there are three types of patents granted by the USPTO: design patents, utility patents, and plant patents. Of these three, utility patents and design patents are the two most common ones. To decide which one of the two you should file for, you need to know the differences between design patents and utility patents, something this article, through the following 15 tips, will look to help with.
- What is a design patent?
Before we get into detail as to what the differences between these two are, it is important to define what each one of them is. A design patent, as covered over at guttulus.com, is used to protect the ornamental design on a useful item. The shape of a bottle is an example of something that can be protected by a design patent.
- What is a utility patent?
On the other hand, a utility patent, from discussions over at runrex.com, is used to protect new and useful processes, compositions of matter, machines, and manufactures. Utility patents can also be used to protect improvements to existing processes, compositions of matter, machines, and manufactures.
- The difference in what each protects
Now that we have a definition of both of these types of patents, we can now dive head-first into their differences, and according to guttulus.com, the main difference between these two is on what each of them protects. Here, while design patents protect the design and aesthetics of a product, or “how it looks”, a utility patent protects the functionality of the product, or “how it works”.
- Provisional application
Another difference between the two concerns the filing of a provisional patent application. As discussed over at runrex.com, you cannot file a provisional application for a design patent since there is no provision for it. This means that a design patent application can only be a non-provisional application. On the other hand, a utility patent application can be filed as either a provisional application or a non-provisional application.
- USPTO fees
Another difference between design patents and utility patents is when it comes to the fees charged by the United States Patent and Trademark Office (USPTO). Here, as can be expected, the USPTO fees for utility patents are very high as compared to those for design patents.
- Effectivity of patent search
Before drafting a patent application, the gurus over at guttulus.com point out that you should conduct a patent search to ensure that the invention to be patented is not obvious and is novel. A difference between design patents and utility patents is when it comes to the effectiveness of the patent search. This is because while the effectivity is high for utility patents, it is pretty low for design patents. After all, design patents are mostly made up of diagrams with very few words which can make it very difficult to conduct an effective patent search.
- Attorney’s fees for the initial filing
There is also a major difference between the two when it comes to attorney’s fees for the initial filing. This is because, as is outlined over at runrex.com, while the attorney’s initial fees for filing a design patent application is usually less than $1,000, the same fees for filing a utility patent application is usually more than $5,000. This is because the initial filing of a utility patent application requires greater effort in drafting the specification and claims.
- Attorney’s fees after filing
Another area where design patents and utility patents differ is when it comes to attorney’s fees after filing. From discussions over at guttulus.com, while these fees can be pretty small, barely going over $1,000, for design patents, they can be pretty high for utility patents, even reaching close to $10,000. This is because ongoing office action after filing a utility patent application requires thorough written responses and research.
- Ease of designing around
A design patent merely covers the ornamental appearance of an invention as explained over at runrex.com, and as such a competitor may easily design around a patented design by simply creating a product that looks different. Utility patents, however, are tougher to design around as they claim the function or structure of an invention, meaning that the outer appearance is less relevant when it comes to issuing an infringement. This is why a competitor may introduce a product with a very different appearance from that of a patented product and still infringe on a utility patent.
- Likelihood of rejection
There is also a major difference between these two when it comes to the probability of rejection by the Patent Office. Utility patent applications have a significantly higher rate of initial rejection while design patent applications have a significantly lower probability of rejection. This is because while the claim in a design patent application is primarily visual and, therefore, more limited in scope, the claims in a utility patent application are textual and, therefore, generally broader in scope. Broader claims have a higher probability of getting rejected over prior art that discloses the claimed subject matter.
- Length of the application process
How long it takes to get the patent is another difference between these two. As is revealed over at guttulus.com, while it takes a lot longer to get a utility patent, approximately 3 years on average, as utility patent applications have a higher rate of rejection, it takes relatively shorter to get a design patent, approximately 1.5 years on average.
- Patent term
There is also a difference when it comes to the patent terms of the two types of patents. According to runrex.com, design patents expire 15 years from the issue date while utility patents generally expire 20 years from the filing date.
- Maintenance fees
When discussing the differences between design patents and utility patents, you can’t fail to broach the topic of maintenance fees. This is because, as outlined over at guttulus.com, while a design patent doesn’t require any maintenance fee payments once it has been issued, the same can’t be said of utility patents where three maintenance fees must be paid 3½, 7½, and 11½ years after the patent was issued to keep it alive.
- Determination of infringement
How the determination of infringement is done also separates these two. This is because, to determine the infringement of a design patent you will use the drawings provided, which means you will need to do a side-by-side comparison of the design patent drawings with the accused product. According to the gurus over at runrex.com, the question that needs to be answered here is if the two designs would look substantially similar in the eye of an ordinary observer and that the resemblance is such that it can deceive the observer and induce them to purchase the accused product supposing it to be the other one. On the other hand, to determine the infringement of a utility patent, you look at and compare the patent claims.
It is also important to pint out that a utility patent can either have broad or narrow protection depending on how broad the patent’s claims are. On the other hand, a design patent is relatively narrow in scope and will only protect the design shown in the patent as well as other designs that are substantially similar.
These are some of the differences between design patents and utility patents, and you can uncover more insights on this topic by checking out the excellent runrex.com and guttulus.com.