Notes on Design vs. Utility Patents
An established new concept or a realized invention potentially has future economic and commercial value. However, the concept developer (ie the inventor) may not immediately realize the potential economic benefits of the invention. Due to the conversion of an abstract invention into a marketed product or service, it is important for an inventor to ensure that the ideas and rights related to the invention are protected for a defined period of time.
Article I, Section 8 of the United States Constitution states that, to promote the advancement of science, inventors have “exclusive” rights to their respective discoveries. The United States Patent and Trademark Office (“USPTO”) is the government entity responsible for issuing patents in the United States.
A design patent protects various visual features of a manufactured item and covers the newly invented ornamental design. It protects the appearance of the invention and is comparatively cheaper and faster to patent. A design patent does not directly protect the functional characteristics of an invention. Therefore, competitors can sometimes get by by changing the overall appearance of an otherwise patent-protected product. In contrast, a utility patent protects the functional aspects of an invention. A single utility patent can protect many different variations of products, thus becoming more economical in the long run.
However, a situation may arise where the invention has a unique function or structure associated with a unique ornamental design. In such a situation, adequate protection could be provided with a combination of design and utility patents. After due consultation with a patent attorney, applications for both patents and utility designs can be filed.
A design patent application primarily included a specification and drawings incorporating the figures. The specification included the preamble, figure descriptions, and sole claim. The drawings contain the essence of what the design patent protects. Therefore, drawings must be carefully written in accordance with the USPTO Manual of Patent Examination Procedures (“MPEP”). In addition, the drawings must indicate the features that the patent is intended to protect, so drawings derived from 3D models, using software such as Pro-Engineer, Solid Works, and CATIA, are often useful.
A utility patent application, by contrast, will include an abstract, background to the invention, summary of the invention, drawings, brief descriptions thereof, a detailed description of preferred embodiments of the invention, and multiple claims.
Although conceptually there are substantial differences between design patents and utility patents, the processing of applications for design and utility patents is similar, and both types of applications will face novelty and evidence analysis at the USPTO. This makes obtaining an opinion on patentability or infringement before filing the application very prudent.
Infringement of a design or utility patent occurs when the exclusive rights granted to the owner of the patent are violated. Infringement of a design patent depends, in general, on whether the accused design and the patented designs are substantially the same. Infringement of a utility patent generally depends on whether the patent claims are “literally based on” the accused invention or whether the differences between the accused and the patented products are insubstantial.
Whether an invention is patentable and whether it infringes on it are separate but related issues. An invention that infringes an enforceable patent will not itself be patentable, although an invention may not be patentable and may not run the risk of infringing another patent (for example, all the patents it could cover have expired). In the event that an inventor realizes that their product is probably not patentable, it may be prudent for an infringement opinion to be issued to ensure that no patent troll is biding its time.
Any inventor or aspiring entrepreneur who is contemplating acquiring patent protection, or wondering if it is necessary, should speak to a patent attorney who can take the necessary prophylactic steps to make sure they are covered in any case.