Can You Get a Design and Utility Patent?
You’ve got an invention and you want to patent it, so you’re wondering what type of protection you need. We are here to help explain what types of patents the USPTO offers and which ones are right for your invention. The patent office offers both utility patents and design patents.
Utility patents protect how an invention, machines, or process works while design patents protect new and unique designs, as well as the aesthetics of an invention. So, can you get both a design and utility patent on your invention? We will answer this question below.
Can You Get a Design and Utility Patent?
Yes, some inventors can get both a design and utility patent on their invention, however, the invention must qualify for both a design and utility patent. So, what makes an invention qualify for both a utility and design patent? If you have an invention that has a functional element, as well as a unique design, you may just be able to protect it with both forms of intellectual property (IP) protection.
For example, if you have developed a new type of foldable smartphone, you may be able to protect the functional aspects of the phone by applying for a utility patent and if it has a unique look, you can apply for a design patent.
Utility patents and design patents can be filed for the same product, however, design patents will only protect the aesthetics of your invention or product and not the functional elements. Utility patents are appropriate to protect the functional aspects of your invention.
Please note that if you want the protection of both a utility patent and a design patent, an applicant will have to apply for both forms of protection separately by filing a utility patent application and a design patent application. Having both types of IP protection makes an invention more valuable because it’s more strongly protected from being copied.
A utility patent will allow the patent holder to stop others from using, making, and selling an invention with similar function and a design patent will allow the applicant to stop others from making, using, and selling an invention with a similar design, aesthetic, or look. This allows the applicant to reduce his competition in the market by restricting others from making and selling his patented invention.
Obtaining a design patent for your invention is usually much less expensive and easier than obtaining a utility patent, making applying for a design patent a good idea if your invention has a unique aesthetic. Overlapping protection is always favored over single patent protection.
Scope of Protection
We all know that having a patent over an invention is almost always better than not having one. As previously mentioned, design patents only protect the appearance of a product and not the functional aspects of an invention. So, while a design patent protects the inventor from parties producing a knockoff that looks exactly the same, it does not protect the inventor from parties producing a similarly functioning product that looks different.
The beauty of utility patents is that they prevent others from making products that function the same way so that even if the product looks different, the patent holder will still be able to take action against the infringing party if they produce a product that merely works the same way.
That said, if you’ve patented your product, you can’t just sit on the sidelines and expect the patent office to protect your invention from being copied. It’s the inventor’s job to look for parties that are infringing upon their patent and bring lawsuits against them.
If an inventor finds a party infringing upon his patent, he can sue them in federal court for patent infringement. If the inventor is successful in his lawsuit, he will be able to obtain a court order, ordering the infringer to stop copying or selling the patented invention.
Utility Patent Benefits Summary
- Protect how an invention works
- Protect how an invention functions
- Ability to stop others from making an invention that works the same as the inventor’s invention
- Allow the inventor to exclusively profit from making and selling his invention
- Stop others from copying the functional aspect of an inventor’s invention
Design Patent Benefits Summary
- Protect how an invention looks
- Protect the unique design of an invention
- Ability to stop others from copying an inventor’s unique design
- Ability to profit from the unique appearance of an invention for a limited period of time
That said, an inventor will not be able to stop others from making an invention with a similar function or look until the patent office grants an inventor’s patent application. Without having an issued patent, an applicant cannot sue other parties for infringing upon his patent because he doesn’t have one yet. However, obtaining a patent is still a smart decision because, in the long-term, an applicant will be able to stop others from making and using his patented invention.
Utility Patent Infringement vs Design Patent Infringement
If an inventor has a patent on his invention or product, he can sue any party that infringes upon his patent. If an inventor has a utility patent over an invention that has been copied, he can sue the party that copies his invention. To succeed in a lawsuit against the infringer, the patent holder will have to show that a party has made, sold, or offered for sale a product that infringes upon the patent claims of the patent holder’s patent.
With a design patent, an inventor is able to sue a party that infringes upon his design by suing them for patent infringement. In a lawsuit for design patent infringement, a patent holder can show that infringement has occurred by placing his design next to the infringing design and showing the similarities between the patented design and the infringing design.
Obtaining a Utility Patent and a Design Patent
Obtaining a utility patent is a complex process that requires the help of an experienced patent attorney. While the patent office allows inventors to represent themselves in patenting their invention, they recommend that inventors hire an attorney to assist them with the preparation and prosecution of their patent application.
Design patents are easier and less expensive to obtain than utility patents, however, the patent office does have some stringent requirements on how to prepare a design patent application, so it’s recommended that applicants seek the help of an attorney to prepare and file their patent application.
If you don’t have the money to hire an attorney to obtain a patent, you can explore the option of hiring a patent agent to assist you with your patent application. Patent agents are qualified and licensed by the USPTO to assist inventors in patenting their inventions.
How Long Do Design Patents and Utility Patents Last?
If an applicant applies for both a utility patent and a design patent, he should be aware of the fact that the patent term of each of these patents is different. Utility patents last for 20 years from the time an inventor files a nonprovisional patent application with the patent office and design patents last for 15 years from the date the patent office grants a design patent application. So, just be aware that design patent protection may expire before the utility patent expires on your invention.
We are offering general legal information and our interpretation of the law, so if you have any questions about your specific situation, please contact a patent attorney and discuss your invention with them. Attorneys are experienced and will be able to offer the best advice for your specific situation.
Getting Both a Utility and Design Patent
By now, you should be aware that you can apply for both a utility patent and a design patent to protect the same invention. The utility patent will protect the functional aspects of your invention, i.e., how your invention works and how it’s used and a design patent will protect the design or appearance of your invention, i.e., how your invention looks.
So, if you have an invention that qualifies for both types of patents, ask your attorney if you should apply for both forms of intellectual property protection. The more forms of protection you have on your invention, the more valuable it becomes. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.