Design patent and utility patent

1. By,
Lavanya Suresh
Associate - Patents & Designs
Altacit Global

2. Utility Patent
● Issued for the invention of a new and useful process, machine,
manufacture, or composition of matter, or a new and useful improvement
thereof.
● It generally permits its owner to exclude others from making, using, or
selling the invention for a period of up to twenty years from the date of
patent application filing, subject to the payment of maintenance fees.
● Approximately 90% of the patent documents issued by the USPTO in
recent years have been utility patents, also referred to as "patents for
invention".

3. Examples
● US 1783484, 1930
● Paper clip
● Martin Ross

4. ● US 5255452, 1992
● Method and means for creating anti-
gravity illusion
● Michael J. Jackson et al
Examples

5. Merits & Demerits of Utility
Patents
● Protects the functional aspects of an
invention.
● Can provide broad patent protection
making it difficult for a competing
product to avoid patent infringement.
● Capable of protecting many different
variations of a product with a single
utility patent.
More expensive than a design
patent.
Takes longer to receive patent
protection (normally 3-4
years).
Does not protect the ornamental
features of an invention.

6. Design Patent
● Issued for a new, original, and ornamental design embodied in or applied
to an article of manufacture.
● It permits its owner to exclude others from making, using, or selling the
design. Design patents shall be granted for the term of ten years from
the date of filing.
● Design patents are not subject to the payment of maintenance fees.

7. Examples
● Coca-Cola bottle
● U.S. D48,160
● Samuelson, A. (1915)

8. ● Apple iPhone 3G
● U.S. D629,799
● Andre, B. (& Jobs, S.) et al.
(2010)
Examples

9. Surface
ornamentation applied
to an article
Configuration embodied
in an article
Configuration and Surface
ornamentation for an
article
Variants of Drawings in Design Patents

10. Merits & Demerits of Design
Patents
Do not protect the functional
features of an invention.
Can be relatively easy to design
around by simply changing the
overall appearance of the
competing product.
Difficult to protect different
variations of product.
● Cheaper than utility patent.
● Usually faster patent protection
(normally between 1-2 years).
● If the main feature of the new
product is the appearance (i.e.
ornamental design), then a design
patent will protect this main
feature.

11. DIFFERENCES
UTILITY PATENT DESIGN PATENT
PROTECTS How it works How it looks
INITIAL ATTORNEY FEE More Less
OFFICE ACTION/EXAMINATION
REPORT REJECTIONS
High probability Low probability
ATTORNEY FEE FOR ONGOING
PROSECUTION
More Less
TIMING (AVERAGE PENDENCY TO
ISSUE OR ABANDONMENT)
More than 4 years Less than 18 months
PATENT TERM 20 Years (Non-extendable) 10 Years from filing date (Extendable upto 5 Years)
POINT OF REFERENCE FOR
DETERMINING INFRINGEMENT
Claims Drawings

12. When to File Both a Design Patent Application
and a Utility Patent Application
• If your invention has a unique structure/function coupled with a unique
ornamental design.
• Both design and utility patent applications will provide you with "patent
pending" while they are pending at the Patent Office.

13. Example
Utility Patent for iPhone (US7479949) Design Patent for iPhone (USD636392)
Claim 1: A computing device, comprising:
a touch screen display; one or more
processors; memory; and one or more
programs, wherein the one or more
programs are stored in the memory and
configured to be executed by the one
or more processors, the one or more
programs including: instructions for
detecting one or more finger contacts
with the touch screen display...
Claim 1: The ornamental design for an
electronic device with graphical user
interface, as shown and described.

14. Cont..
Utility Patent for iPhone (US7479949) Design Patent for iPhone (USD636392)

15. Thank you.