Industrial machines and tools, as well as consumer products, are
protected by design patent as well as other legal means - trade dress,
product configuration, utility patent, copyright and contract. By carefully
selecting an appropriate combination of legal protections for each new
product, the likelihood of it being knocked-off can be minimized.
Design Patents and Utility Patents Compared
Ornamental appearance. Design
patents provide protection for the ornamental appearance of a
product. A design patent is limited only by the visual
aesthetics of the article and does not offer any protection for its method of
construction or operation. In the language of the statute, a design
patent covers any “new, original and ornamental design for an
article of manufacture.” Design patents differ from utility patents
Utility patents. Utility patents
are granted for any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof.
Utility patents typically provide protection for machines and
processes and are the most common and commercially important. Utility
patents protect the functional and structural features of a product
without regard to its appearance.
Functional aspects excluded.
Design patents, on the other hand, do not cover utilitarian
functions or structure. That is, design patent protection extends
only to the ornamental appearance of an item, and provides no protection
whatsoever to structure or functional aspects.
Scope. The scope of coverage of a
design patent is provided by its drawings, while the scope of a
utility patent is provided by the written
claims. Each design patent includes only a single claim, and that
claim is stated in formal terms relating to the ornamental design,
as illustrated by the drawing figures.
Infringement. Another difference
between design and utility patents occurs in the standards for
infringement. Infringement of a utility patent is a complex matter
that depends on careful interpretation of the written claims, while
design patent infringement depends on subjective, visual impressions of
similarity. The legal standard for design patent infringement is
similarity in overall appearance between the item illustrated in the
design drawings and the accused product, as viewed by an ordinary,
prudent purchaser of that type of product.
Remedies. Yet another difference
between a design patent and a utility patent is related to the
remedies available for patent infringement. Unlike a utility
patent, the owner of a design patent has the right to recover an
infringer’s profits in addition to any actual damages.
Cost. A further difference that
should be considered is based on acquisition and maintenance costs.
Typically, the cost of preparing and filing a design patent
application is under
$2,500. The corresponding cost of preparing and filing a utility
patent application on the same product could easily be as much as
$8,500 or more. There is a substantial difference in after-grant
costs also. For example, there is no maintenance fee payable to
maintain a design patent on active status. On the other hand,
maintenance fees ranging from several hundred dollars to a few
thousand dollars must be paid at four year intervals to keep a
utility patent alive.
Term. Finally, the active life of
a utility patent commences on the date of grant and expires 20 years
from its priority date, while the active life of a design patent
extends 14 years from the grant date.
Dual coverage. Because utility
patents and design patents provide different types of protection, a
product may be protected simultaneously by both. We recommend
filing design as well as utility patent applications on the same
product, where the product has a unique ornamental
appearance. A design patent can provide powerful protection, and
will discourage “look alike” products for which the competitor has
found a way to otherwise avoid infringing the utility patent claims.