HOW TO PROTECT YOUR INTELLECTUAL PROPERTY: UTILITY PATENT VS. DESIGN PATENT
I have been working with a client who came up with a great design for a household product. He has been working on it for some time, and he is ramping up to go into production. Obviously, the question of IP protection has arisen, and the question is, how can we best protect it. The first question is always, is it useful? If it is useful, then it comes under patent law. Copyright law expressly prohibits protecting things that have utility, but rather is intended to protect creative expression.
So, we need a patent. Now comes the question over which type? There are several, but literally 99% of all patents will be one of two types: utility patent or design patent. As the names imply, a utility patent protects the function of an invention, whereas a design patent protects… the design. Utility patent vs. design patent is an important question inventors face early in the IP protection process.
Utility Patents
Utility patents can vary dramatically in breadth. Depending on how the claims of the patent are written, you might be claiming a very specific method or apparatus, or you might be claiming a very broad family. The constant thread is that you are claiming the utility of the object. How something works. What it does. The problem it solves and why it solves it better than previous technologies. What it is.
Design Patents
Sometimes you don’t invent something that does anything new. Sometimes you just invent a nice version of something. What you have invented is a design. An ornamental expression that has value in-and-of itself.
The prototypical example of a design patent is the (highly litigated) design of the iPhone, in which Apple claims a rectangular screen surrounded by a bezel with rounded corners. The shape and proportions of the device are key to its overall appeal. It is a nice version of a phone.
Note that the issues being litigated between Apple and Samsung had nothing to do with the function of a smartphone. They were not arguing over a touch-based graphical interface that wirelessly transfers data and allows remote communication. No- they were arguing over whether the Samsung phone looks like the iPhone.
If you have invented a better mousetrap for example- one that catches more mice, is more humane, and is safer to use- you need to protect those functions from infringement. It is not the visual design of the device that matters in this case. What matters is the utility of your new device.
IP ownership: Utility Patent vs Design Patent
Claiming ownership over the abstract functions of the device is not a straightforward process. It requires skillful drafting in the initial application, and then it further requires negotiating the examination process. Every invention can only be patented once, so the breadth of the patent claims must be carefully tailored to avoid existing technology. When successful, however, inventors will own a flexible concept that can take multiple forms. Utility patents provide broad coverage.
Claiming ownership over a design is significantly easier. Of course the application formalities still apply, and it can be quite complicated for those not versed in the process, but at its core, a design patent is just a claim over a picture of the design. It is a substantially easier and less-costly application process. Design patent applications also have much lower chances of being rejected by the patent office.
Sometimes it is not immediately apparent whether a design patent or a utility patent would be more appropriate for a given invention. Sometimes, both are called for. A good patent lawyer will be able to evaluate the invention to determine which aspects can or should be protected and which type of application will have the most value for the inventor.
A brief warning to inventors and the unaware
There are a number of institutions that operate to “help inventors get patents.” Occasionally, they will offer a guarantee of a patent issuing. I personally refer to these as “patent mills,” and their modus operandi is to file a design patent on every single invention that comes through their door. This is a huge disservice to the inventors. If the wrong type of application is filed, the important and valuable aspects of the invention would be donated to the public domain and forever lost to the inventor. It is a scheme to extract money, and nothing more.
Free consultations are your friend
My goal is to educate inventors on which type of application is appropriate. However, most of the time it is easier just to talk to a patent lawyer for free to get some initial advice on your invention. I wrote about free consultations a little while back because it is such a useful tool for inventors. If you have questions about how to proceed with protecting your intellectual property, please feel free to schedule a free consultation.
