Key Differences Between Design and Utility Patents
In addition to protecting different aspects of an invention – functional for utility patents and ornamental for design patents – the lifetime of each type of patent is different. The protection for a utility patent lasts for a maximum of twenty (20) years from the date of filing, while the protection for a design patent lasts for fifteen (15) years. Because of the extended lifetime and the maintenance fees required throughout that lifetime, utility applications end up being more expensive than design patents in the long run.
Let us consider a small entity, which includes most inventors that are not assigning her rights to a large corporation. The standard filing fees for a design patent application are $510, while the standard filing fees for a non-provisional utility patent application are $830. The maintenance fees for an issued utility patent for a small entity are $1000 at three and a half (3.5) years after issuance, $1800 at seven and a half (7.5) years after issuance, and $3850 at eleven and a half (11.5) years after issuance (these estimates are accurate as of November 2021). Additionally, the fees charged by a patent attorney or patent agent are generally greater for a utility patent application than a design patent application because there are a lot more components involved in drafting a utility application.
A design patent is only meant to provide exclusionary rights to an ornamental design, while a utility patent provides exclusionary rights to an invention or a method of using an invention. There is sometimes overlap, where an ornamental design also has a useful application or makes a marked improvement to an invention in a utilitarian manner. In these cases, the inventor may want to obtain patents of multiple types to protect both the useful components of the invention as well as the ornamental design.
Utility patents allow as many claims as an inventor would like to include – though up to twenty (20) claims are included in the initial filing fee of the application. Design patents only allow for a single claim, referring to the ornamental design as displayed in the figures included in the application. Both utility and design applications may be accompanied by as many figures as desired by the inventor.
Utility patents may be filed as a provisional application in order to preserve a filing date. The United States operates on a first-to-file system, so obtaining the earliest filing date possible is important to ensure you can receive protection. This provisional application acts as a placeholder and gives the inventor a full year to prepare and file a non-provisional application. Design patents do not have an equivalent to the provisional application. This means that the date that you file a design application is the only filing date you will receive for that design, and any subsequent changes to the design will need to be filed in additional applications, each with their own filing dates (though priority may be claimed to the first application's filing date).
Should the USPTO reject a patent application (design or utility) multiple times, there may result a final rejection, which means that, from the USPTO's point of view, the application is abandoned and no longer under consideration. However, with utility patent applications, you may file a Request for Continued Examination (“RCE”) to reopen the prosecution with new arguments. Design patent applications do not have the option of filing an RCE. This is not as large of an issue as it sounds, thought, as it is much less likely that a design patent application will be rejected in the first place.
How to Know When a Design Patent is the Correct Choice
If you have developed a design for a product that you believe has value – to you or to the world at large – you should consider protecting that design so that others cannot unfairly benefit from your work. Once your design has become public knowledge, you only have one year to garner patent protection through the USPTO. This public knowledge may come in a variety of ways; whether that be by you telling people about the design, offering to sell a product that uses the design, or even personally using a product that contains the design while you are in a public space.
How We Can Help
The patent professionals of Gallium Law are here to help you gain protection for your valuable designs. We have significant experience with design patents, and we are ready to take you through the design patent process step-by-step: from preliminary searches of the patent space, to drafting your design application, to the granting of a design patent. Please call us at 651-256-9480 or fill out this Contact Form to speak with us before it's too late.
*The information provided in this article is not legal advice, and should not be relied on as such. The content of this article is for informational purposes only, and is meant as a starting point on your search for answers to your legal questions.
 37 CFR §1502