Patent

Utility or Design Patent - Which One Should I File?

Utility and design patent applications should be considered together in an IP portfolio, but there are several pitfalls if you don't use them correctly.
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Posted on
September 17, 2021
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5
Minute Read

I often get asked by inventors: "Should I get a utility patent or a design patent?"

That's kind of like asking if you should have eggs or bacon for breakfast.

Eggs and bacon go really well together in the same meal.

Why not have both?

For some inventions, you should consider both utility AND design patents, just like having eggs and bacon for breakfast.

Here's the type of question I get asked from inventors: 

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If my product is on the market now (both outside the US and inside the US), can I still be covered by a provisional patent or a design patent?

Is it better to go with a provisional patent to get some protection for 1 yr?

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The circumstances for each inventor can vary, but the questions are consistently similar.

To clarify, this is really three related questions: 

  1. Should I get a utility patent?
  2. Should I get a design patent?
  3. Can I still file

My response to curious inventors tries to help clarify that utility and design patents are not exclusive tools.

As an analogy, you only use a hammer for nails and a screwdriver for screws, but you often need both of them in your toolbox for a project.

Utility and design patents are also different, but complimentary, tools in your IP toolbox.

When should you file a utility patent application?

File a utility patent application to cover the way your invention works. This allows you to protect the physical structures of your invention and how your invention functions.

This could be either:

  1. A non-provisional patent application, which gives you “patent pending” status as long as it is pending or issued. This is the full application which gets examined and, if successful, granted as an issued patent for approximately 20 years total from the date of filing. An issued patent can be enforced against infringers.
  2. A provisional patent application, which gives you “patent pending” status for 1 year. At the end of the year it expires. This does not give you the ability to enforce against infringers. If you want to file the non-provisional prior to expiration of the provisional then you can enter the non-provisional process (see above) with the benefit of the earlier filing date of the provisional. NOTE: This cannot be used as a priority application for a design patent application.

On a related note about vocabulary, when people refer to a "provisional patent" they really mean a "provisional patent application" because there is no such thing as a provisional patent. A provisional patent application is only an application--it is never examined and never becomes an issued patent. It can only be the basis for a priority filing date if you decide to file a non-provisional patent application.

When should you file a design patent application?

File a design patent application to cover the ornamental design of your invention. This allows you to protect the visual look and style of your product. This is a full application which gets examined and, if successful, granted as issued patent for approximately 15 years from the date a grant. NOTE: A design patent application cannot be linked to a utility provisional patent application, as explained below.  

How are utility and design patent applications different?

For some products, it makes sense to file both a utility provisional patent application AND a design patent application. The utility provisional patent application gives you the option to decide later whether to file the full non-provisional patent application. The design patent application could allow you to protect a couple versions of your product if they have consistent stylistic features.

If an inventor were only able to file one of these, it would depend on the actual product. In some cases, it would make sense to file a design patent application, instead of a utility patent application, if it's more likely that a product will be able to be patented for it's unique ornamental design than it's physical or functional arrangement.

Can utility and design patent application be linked together for priority?

It's really important to understand that utility and design patent application processes are separate. While a design patent application might be created from a non-provisional utility patent application (under limited circumstances), it's almost impossible for a utility patent application (provisional or non-provisional) to be created based on a design patent application.

Also, be wary of one additional, common trap--a design patent application cannot be linked to a provisional utility patent application. This is a critical distinction because this question is often asked too late in the product development process.

When an inventor files their initial provisional utility patent application and gets "patent pending" status, they feel like their invention is protected. It is, but only from a utility perspective that covers the physical structure and functions of the product. If an inventor also wants to protect the ornamental design and style of the product, he or she will only be able to do so if they have not already disclosed their invention or created another bar to the patent process. In other words, filing a provisional utility patent application reserves your right to file a later non-provisional utility patent application, but it does not preserve your right to file a later design patent application. So, even though a provisional patent application protects you against later bar events for utility patent applications, it does not protect you against bar events for design patent purposes.

What is an "absolute bar" that prevents you from getting a patent?

A "bar event" is any public disclosure or action (sale, offer for sale, etc.) with your invention. Once you create a bar event for your invention, you limit your ability to file for a patent application. However, these limitations vary from country to country. Fortunately, in the United States you have a 12-month from your earliest “bar event” to file any patent applications for your invention. Unfortunately, most countries outside the US do not have a grace period, so any bar event prior to filing your patent application creates an “absolute bar” against ANY patent filings. In other words, without a grace period you are not entitled to patent protection at all in most countries outside the US.

The Takeaways

If your invention has unique physical features and/or functionality, then you should file a utility patent application.

If your invention has a unique visual look that you want to protect independently of the specific physical features or functionality, then you should file a design patent application.

If you want both utility and design patent protection, then you will need to file both utility and design patent applications. Utility and design patents go together like eggs and bacon at the same meal or like hammers and screwdrivers in the same toolbox.

Finally, if you started your patent process with a provisional utility patent application, then you are still at risk of losing your right to pursue a design patent on your invention.

Jeff Holman
Jeff Holman draws from a broad background that spans law, engineering, and business. He is driven to deploy strategic business initiatives that create enterprise value and establish operational efficiencies.

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