When Do You Need To File Both Utility & Design Patents?

October 27, 2022
- Design Search
- State of the Art

The complex patent landscape can leave you at a crossroads when it comes to taking crucial decisions. From filing to litigation, there will be multiple instances that will leave you confused and wondering. Deciding between design and utility patents is one such dilemma. Once you have reached the conclusion that patents- and not trademarks, trade secrets, or copyrights- are the best IP protection for your invention, the next step is to choose between design and utility patents. But do you really need to choose? Isn’t the protection guaranteed by two much superior to one? Read on to find out.

Does The USPTO Allow Filing For Both Utility And Design Patents?

The short answer is yes. It’s a lesser-known fact but the United States Patent and Trademark Office (USPTO) makes provision for obtaining both design and utility patents for the same article. Utility and ornamentation are different aspects, and some inventions may possess both features inseparably. It is possible to have a unique and novel use/structure, as well as a one-of-a-kind decorative design in a single product. Basis this distinction you can file for both patents.
While it is possible to apply for both types of patents, it is double the effort both in terms of time and resources. It is important to discuss the administrative and legal intricacies involved in filing for two different patents for the same invention.

Protection Afforded By Utility Patents

Utility patents are used to protect inventions, machines, or processes. They are granted to ideas that satisfy the criteria of:

Novelty: The invention must be unique and distinct. It should not resemble any existing invention in the market or be copied from any ideation available in public records.
Non-obviousness: For a patent to be granted, the invention must be original and should not easily come to a person involved in the same field. This is one of the most complicated and challenging rules to overcome when filing for a patent.
Utility: It is important that the invention be of practical use and not merely speculative. The immediate usefulness of the invention is an important consideration when granting a patent.

As is clear, the focus of utility patents is on the working and practical usage of the invention. Utility patents are the toughest to obtain and involve complex documentation. If you feel your invention meets all the eligibility requirements, the next step is to conduct patentability or prior-art search to determine if it is safe to go ahead with the filing. Once granted, utility patents require to be published, unlike design patents.

With a utility patent by your side, you can challenge any product that copies the structural or functional aspects of your invention. No entity can use or sell the invention as mentioned in the patent claims. They risk infringement litigation if they do so. Utility patents last for a period of 20 years from the date of filing.

Protection Afforded By Design Patents

Design patents are used to safeguard a product’s unique visual qualities or ornamentation. It lends itself exclusively to the design aspect of the product rather than its function or use. To qualify for a design patent, the design:

Must be novel
Must satisfy ornamental standards, i.e., it must possess the aesthetic skill and artistic conception.
Must be non-obvious
Must have a single claim

Unlike utility patents, design patents can only cover a single claim. They are awarded for a term of 15 years from the filing date. While design patents do not protect functionality, the article must have some usefulness for it to qualify for a design patent.

Why Use Both Utility And Design Patents?

Utility patents are considered more powerful and encompassing than design patents. However, as is clear from the above discussion, each serves a different purpose. Both the design as well as the function of the product are essential components of the brand-building process and cannot be overlooked. Given the increasing emphasis on the appearance of products, there is increased awareness among businesses with respect to design patents. It is becoming equally important to safeguard the outward appearance of your product as much as its inner working. Otherwise, the market will be replete with products that look like yours but do not offer the same usage mechanism.

Applying simultaneously for two patents can also be beneficial if you are worried that counterfeit products will pervade the market before you obtain the utility patent which may take up to four years. Design patents have a shorter waiting period and can provide interim protection for your invention. So, if your invention is a fair mix of both looks and function then filing for both patents makes good business sense.

Conclusion

A comprehensive IP strategy broadens the protection of your invention. It makes it tough and almost impossible for competitors as well as counterfeiters to replicate your product in the market without risking infringement. But before you make a decision, it is best to consult an expert firm for the best fit for your product. Not all products need two different patents to protect them. An experienced attorney will be the right person to help you adopt the most beneficial IP approach for your business.

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