As covered in Chapter 4, the USPTO grants three types of patents: utility, design, and plant patents. The utility patent protects an invention’s functional features, while a design patent protects its ornamental features (See Appendices B and C for sample utility and design patents). Plant patents, which are not covered in this book, protect asexually reproducing plants.
Deciding what application to file: Design or utility?
Utility patents protect an invention’s functional aspects but not its aesthetic design. Design patents protect an invention’s ornamentation regardless of its functional aspects. The product’s point of novelty needs to be deciphered to determine whether it is more appropriate to acquire utility or design patent protection (see Chapter 1 for more information about the point of novelty). If additional funds are available, an inventor may want to seek both. This is beneficial if the invention is only a minor improvement over existing technology (i.e., a “thin invention”) or might be novel, but likely considered obvious. By filing for both, the likelihood of receiving some form of protection increases. It is difficult to acquire a utility patent for a thin invention but if the utility patent is more appropriate, it should be sought. A design patent is generally easier to secure and for thin inventions, it may provide some minimal intellectual property protection. Before proceeding with the filing of a design patent application, however, it is important to understand the limitations of design patent protection, some of which are discussed below. Chapter 8 provides a more comprehensive discussion on design patents.
When choosing between a design or utility patent, it may be a useful exercise for the inventor to recall words he or she generally uses to describe the invention. If the description reflects the product’s function (e.g., faster, cheaper, easier, etc.,), it is more likely that a utility patent should be sought. If the inventor uses words that describe the invention’s aesthetics (e.g., looks, beauty, sleek, etc.,), a design patent should probably be sought.
However, sometimes an inventor’s description will encompass both function and aesthetics, for example, building blocks that when assembled constitute an aesthetic product (e.g., a Lego® set). In this case, the ornamentation is not a fixed design but something that can be reconfigured repeatedly. Therefore, the Lego® set’s functional features enable one to create something aesthetically pleasing. However, its primary utility is functional. These types of inventions require utility patent protection, because the aesthetic designs are secondary in importance to their functional ability. If the design is fixed and cannot be changed however, the design can be protected by a design patent. However, the inventor ought to understand the limitations of the design patent (see Chapter 8 for a discussion on design patents and below for a discussion on the limitations of design patents).
Some clients prefer to pursue design patents because they are less costly than utility patents. However, they only provide sufficient protection in limited circumstances including, but not limited to, (1) when the product is sold as a set, or a product line shares a unique design element; (2) to ward off lazy competitors and; (3) to prevent manufacturers from selling items that do not pass quality control during manufacturing. Design patent protection may be suitable in other circumstances but the primary ones are discussed below. I will briefly cover each one of these circumstances below.
Unique Design Element
If a business sells a product that is typically sold as a set or if a product line has a common design element (e.g., home goods, furniture, and signage), a design patent may be beneficial. For example, if a customer buys a dining set with four chairs and wants two more, the customer would likely want to purchase chairs of the same design. In another scenario, consumers often prefer to purchase products with a matching design element. For example, if a customer buys an appliance from a given kitchen line, he or she would likely want to purchase kitchen appliances that include the same design element such as matching knobs or handles. If a design patent is not secured on these types of products, competitors would be able to imitate the design and consumers would be able to purchase cheaper, matching, imitation products.
A design patent would also protect against a “lazy competitor.” A lazy competitor asks a manufacturer to reverse engineer a product without any significant modification. However, if an inventor has secured a design patent on the product’s external appearance, any sales of the reverse engineered product would be identical in design and therefore a clear case of design patent infringement. Design patents force lazy competitors to alter the appearance of their products to avoid liability for design patent infringement. Securing design patents may be a good strategy if the patent owner has had a history, or experience, with such lazy competitors simply copying their products.
Rejected Items from Manufacturing Vendors
Design patents may also prevent the sale of items that did not pass quality control during manufacturing. The manufacturer might try to sell these reject items without the knowledge or authorization of the inventor (a typical problem when manufacturing products in China). Manufacturing overruns (i.e., items manufactured over the ordered amount) are common, and when the inventor does not buy them, the manufacturer may attempt to sell them to third parties to make additional profit on the order. Securing a design patent can deter this conduct since rejected items and overruns would be identical to the design patent and would constitute design patent infringement when sold in or imported into the United States.