Note: I have not been posting much lately do to extended travel and work considerations, but I should be back to a normal posting schedule shortly. Now to the topic at hand.
Design Patents Protect Appearance – Utility Patents Protect Functionality
Design patents differ from utility patents (what we usually think of, when we think of patents), in several important ways. The main difference is that utility patents protect the functionality of a useful invention, whereas design patents protect only the appearance of an object.
This is a critical distinction to understand if someone is telling you that you should apply for a design patent. A design patent only protects against another object that is substantially similar in appearance. If the appearance of a competitor’s product is different than your patented design, for example due to a change in the shape of the external housing, your design patent affords you absolutely no protection or recourse against this competing product.
Even if the competing product has all the same parts as your patented design and does exactly the same thing, your design patent gives you absolutely no protection if the appearance of the two products is not substantially similar.
If your invention is an improvement because of what it does, and not just because it looks good, you do not want a design patent- you need a utility patent.
In fact, a design that is dictated primarily by its function cannot be protected by a design patent. This applies, for example, to ergonomic designs for computer mice or other tools, gear designs, and aerodynamic vehicle parts. Because their design is dictated by functional, and not merely ornamental, considerations, any design patents ostensibly covering such designs are invalid.
Rules Governing Design and Utility Patents
Design and utility patents are governed by the same rules, except as modified for design patents by MPEP § 1500. Some of these changes include the length of protection- 14 years from grant for design patents as opposed to 20 years from filing for utility patents- and timing and priority considerations.
Design Patents Cannot Protect Hidden Features
A design for an article that is hidden cannot be protected by a design patent. Only the outward appearance that is visible and of commercial concern can be covered by a design patent.
An Invention Can Be Protected By Both Utility and Design Patents
An invention may include both ornamental and functional features. The functional features can be protected by a utility patent and the ornamental features, not dictated primarily by functional considerations, can be protected separately by a design patent.
I will continue my explanation of design patents in future posts. If you have any questions about the different roles of design and utility patents, please let me know in the comments.
{ 2 comments… read them below or add one }
Your contention that design patents cannot protect hidden features isn’t entirely true, see D,316,097, Tanaka et al. It’s for a Tape Drive Unit for a Tape Recorder. A purchaser of the recorder never sees that tape drive when using the tape recorder but the ruling was that the “purchasing agent” saw the tape drive when making the decision to source it in quantity for production of tape recorders.
George,
Interesting, thank you for your comment. I agree that my wording could be improved. The tape drive would be visible and of commercial concern to the person buying it for production of tape recorders, although it is hidden when “used.”