Spring 1999

When inventors consider how to protect their rights in a new invention, they often do not consider or fully appreciate the options available to them.  Under U.S. Patent Law there are three different types of patents which are granted by the U.S. Patent & Trademark Office (PTO).  They are Utility, Design and Plant Patents.  Of interest to the vast majority of inventors are utility and design patents, as plant patents apply to the invention of different plants (as in that which grows in your back yard).   Accordingly, this article will address the embodiments and differences between utility and design patents in the United States.

Utility Patents

Utility Patents are the most common form of patent protection available for an invention and are the type of patent most people think of when they consider filing for patent protection.  Since June 8, 1995, the term of a utility patent has been fixed at twenty years from the date the patent application was first filed with the PTO.  Utility patent applications filed prior to June 8, 1995 are enforceable for seventeen years from the date of issue by the PTO.  Once a patent is granted, owners of utility patents are also required to pay periodic maintenance fees to the PTO in order to retain their rights in the patent.  There are currently between five and six million utility patents issued by the PTO from the inception of our patent system although most have long since fallen into the public domain (available for use by anyone).  Once a patent expires, either because it has reached the end of its valid term or for failure to pay maintenance fees, it enters the public domain and its owner no longer has exclusive rights to the limited monopoly granted to them in the patent.  Utility patents are generally available for inventions which perform a function, although other elements of the invention may be covered by design patents or copyrights.  Among the general scientific fields covered by utility patent protection are mechanical, electrical, chemical, biotechnology and computer software disciplines.  Accordingly, when someone generally refers to a patent they usually are referring to a utility patent.

In addition to the patent protection provided under U.S. law, an Applicant (for foreign purposes this may be the inventor(s) and/or owners of the rights in the subject matter of the patent application) may seek protection of their invention under the auspices of the Patent Cooperation Treaty (PCT).  The PCT provides an international framework for seeking and acquiring utility patent protection in the member states of the treaty.  (You should note that this does not apply to Design patents as they are not a part of the treaty.)  Alternatively, or if the subject country is not a member of the PCT, an Applicant may seek patent protection directly in individual countries.  Under a number of international treaties, including the PCT, an Applicant is generally granted a 12 month window from when they file for utility patent protection in the U.S. to file for utility patent protection in most, but not all, foreign countries.  Accordingly, international patent protection is available for one’s inventions although one should consult with an experienced patent attorney for particulars on specific countries and their filing requirements.

Design Patents

Unlike a utility patent, a design patent applies to the ornamental features of an invention, and does not protect the functional elements of the invention.  This occasionally necessitates the filing of both design and utility patent applications to more fully protect a particular invention.  There are currently over 400,000 design patents in the U.S.  Also unlike utility patents, design patents are not covered under the PCT.  Accordingly, design patents differ greatly from utility patents.

In general, the invention(s) which is the subject matter of a design patent is the ornamental features contained in the drawing figures of the patent.  As a practical matter, this necessitates the need for accurate and precise drawing figures in design patent applications, as even the slightest variation from the actual item may result in the failure of the patent to provide rights in the intended item.  Furthermore, as the design patent process is different from the utility patent process, the consequences of a failure to provide accurate and precise drawings at the initial filing stage may result in one’s difficulty in obtaining a design patent or in abandonment of their rights to a design patent.  Therefor, one must take great care in retaining a qualified and experienced draftsman when drafting drawing figures intended to represent the subject matter of a design patent.  Accordingly, one should consult with an attorney experienced in design patent prosecution prior to seeking design patent protection as this may greatly aid the applicant in successfully acquiring enforceable rights in a design patent and ensuring that the design patent actually will be applicable to the intended item.

If an Applicant is interested in seeking design patent protection in any foreign countries, the Applicant is generally granted a six month window from their filing date in the U.S. to file for design patent protection in individual foreign countries in which design patents are available.  Not all countries have design patent protection.  However, for those that do, the Applicant must file directly in each country since an international application under the PCT is not available for design patents.  Accordingly, if the invention has new, useful and non-obvious ornamental features, a design patent may be a wise form of protection.

In conclusion, these are different forms of patent protection available for different aspects of an invention.  Design and utility patents are two forms of patent rights which are intended to provide patent protection to differing inventions.  Accordingly, one should consult with an experienced patent attorney when considering seeking patent protection for one’s invention as alternative methods and forms of protection may be available to an Applicant depending upon the subject matter of the invention. 

Design Patent v. Utility Patent
Design Patents Utility Patent
  • Protects only design and ornamental subject matter of invention
  • Life of the patent may be 14 years from date patent is issued by the U.S. Patent & Trademark Office
  • The specific drawing figures in the patent grant are the subject matter claimed
  • 6 month window for filing for foreign patent rights based upon U.S. filing date
  • Cannot file for foreign protection under the Patent Cooperation Treaty (PCT)
  • Lower U.S. filing fees and issue fees than that of a Utility patent
  • Protects only utility aspects of an invention (i.e. computer software, mechanical, electrical, chemical, and biotech aspects of invention)
  • Currently the life of the patent may be 20 years from date patent is filed
  • The claims contained in the patent grant are the deed of the patent grant — drawing figures depict the subject matter of the patent
  • 12 month window for filing for foreign patent rights based upon the U.S. filing date
  • Can file for foreign protection under the PCT

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