US Design and Utility Patents - How Do They Differ?

Don't let the term "patent" confuse you, design patents and utility patents are different forms of legal protection. Generally, a utility patent, which is what most people mean when they don't specify what type of patent, protects the way an invention works or is used (35 U.S.C. 101). In contrast, a design patent protects the way the invention looks (35 U.S.C. 171). Making it confusing at times, an invention may be eligible for one or more design patents and/or utility patents!

Some of the other differences between US design and utility patents are as follows:

1. Patent term: An utility patent application filed on or after June 8, 1995 has 20-year patent term from the earliest effective U.S. filing date (subject to any patent term adjustment, e.g., for PTO delay), while the term of a design patent is 14 years from the issue date (35 U.S.C. 173).

2. Maintenance fees: For a utility patent to remain in force, one must pay maintenance fees 3.5., 7.5., and 11.5 years (extendible six months with a surcharge fee) from the issue date (37 CFR 1.20), while design patents require no maintenance fees.

3. Claims: Design patents have a single claim, while utility patents typically have multiple claims.

4. Restrictions: The Examiner has discretion whether to restriction on multiple inventions in a utility application, but it's mandatory in design patent applications (MPEP § 1504.05).

5. International applications: the Patent Cooperation Treaty (PCT) permits extending foreign deadlines for multiple countries for utility patents, while design patents await implementation of Hague agreement hopefully late 2014.

6. Foreign filing deadlines: utility patent applications have up to 12 months after the first filing, while design application only have up to 6 months (35 U.S.C. 172). Don't forget this difference!

7. Provisionals: Utility patent applications may claim the benefit of a provisional application, while design patent applications cannot.

8. Request for Continued Examination: Available for utility patents application, but not for design applications.

9. Continued Prosecution Application (CPA): only available for design applications today.

10. Publication of Application: Required for all utility patent applications unless foreign filing rights are waived by the applicant, but design applications are not subject to publication.

This is a plain English version of MPEP 1502.01. See MPEP 1500 Design Patents for details.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Issues Record Number of Patents in 2013 - See Professor Crouch Patently-O Article

Professor Crouch's article Utility Patents Granted in 2013: A New Record (For the Fourth Consecutive Year) states the USPTO issued 277,861 utility patents in 2013. The graph accompanying the article indicates this quadrupled what I saw as a patent attorney admitted in 1989.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - IP Awareness Assessment

If you are interested in knowing more about IP without receiving a legal bill from your attorney, you may want to check out this new feature on the USPTO web site. The USPTO and the National Institute of Standards and Technology Manufacturing Extension Partnership developed an online IP Awareness Assessment which covers IP strategies, best practices, international IP rights, IP asset tracking, licensing technology to others, and using technology of others. It covers five categories of IP: copyright, design patents, trademarks, trade secrets, and utility patents. The assessment is free and takes 10-30 minutes.

Copyright © 2013 Robert Moll. All rights reserved.