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Utility Patent
Design Patent vs. Utility Patent Design Patent vs. Utility Patent In the United States there are two distinctly different types of patents available: design patents and utility patents. Around four hundred thousand design patents have been issued while over six million utility patents have been granted. Utility patents protect the functional and structural features of a product without regard to how it looks. Design patents, on the other hand, protect the ornamental appearance of a product without regard to how it functions. Although many patent law rules apply to both design and utility patents (e.g., you must apply for a patent within one year of the first printed publication or offer to sell the product), design and utility patents generally protect dissimilar things. This is manifested in the distinctly different types of claims which are presented in these two types of patents: A utility patent "claim" is a numbered paragraph at the end of the patent which describes in words what the inventor regards as his "invention". There can be one or many claims; typically, there are around 20 claims in each application which get examined for "novelty" and "non-obviousness" by the patent examiner. The patent law requires that these claims be supported by a detailed written description of the invention, together with drawings of the product (which need be only schematics or sketches but which must disclose the "best mode contemplated by the inventor for carrying out his invention"). Utility patents can be very valuable in that they protect the structure and function of the product described in the claims, plus equivalents. Thus, the protection provided by a utility patent is theoretically not limited to the precise embodiment of the product shown and described in the specification and drawings; functional and structural equivalents are protected as well. In contrast, a design patent is relatively simple. There is only one claim, and it standardly reads something like: "The ornamental design for a widget as shown and described." Thus, there is no detailed specification; no detailed claims to draft. Your protection, in other words, is defined by the drawings in your design patent application. Thus, the one area in a design patent application requiring the greatest care and thought (and the one most frequently overlooked by most patent practitioners) is the preparation of the design patent drawings. Many a design patent lawsuit has been lost because insufficient thought was given to the patent drawings at the beginning of the patent process. The scope of protection of a design patent will depend on what is illustrated in the patent drawings, plus how close the prior art designs are to the patented design. And yes, it is certainly possible to get a utility patent and a design patent on the same product. Time Deadlines Unlike copyright and trade dress protection, you must file your design patent application (and/or utility patent application) within one year of:
This one year time period, commonly referred to as the "grace period," also applies to obtaining a design registration in the European Community (called a Community Design). The grace period in many other foreign countries is non-existent - you must file for design protection before any of the events noted above in order to preserve your rights. Fortunately, an international treaty known as the Paris Convention allows filing of a design patent/registration in a foreign country within six months of filing a design patent application in the United States to have the same effect as if you filed in the foreign country on the day you filed in the U.S. In the case of a utility patent, you have one year within which to file in a foreign country. Thus, it is important to give attention to the design (and utility) patent possibilities very early on in the product development process. Normally, the product development process conceives the functional and structural aspects of a product before the appearance is finalized. Thus, one normally investigates the utility patent possibilities first, and turns to design patent possibilities about the time when the actual production model is being finalized. This is because the design patent drawings must accurately reflect all or a portion of the actual product that is going to be marketed, since the primary thing a design patent protects against is knock-offs. This approach also makes sense in view of the reality that a utility patent application takes much longer to prepare than a design patent application, and also because one normally wants additional lead time to investigate, by means of a patent search, the probability of obtaining a utility patent before one makes the relatively large investment required to apply for and obtain a utility patent. It is normally not cost-effective to perform design patent searches prior to filing, since most original designs are unique enough to be patentable, and since the cost of a design patent application would be about the same as the cost of a search. What is it? A utility patent gives the owner the right to exclude others from importing, making, using, offering for sale and selling the claimed invention. What does it protect? It protects those functional and structural elements of a product which are set forth in the patent claims, plus equivalents. It does not protect everything disclosed in the patent; only that which is claimed. Your claims will be allowed only if they are deemed to be "novel" and "non-obvious" over the "prior art" (i.e., everything that's been done before you). The types of products which can be protected by a utility patent are almost limitless; anything manufactured or built will qualify. How do you get it? A formal patent application must be drafted and filed in the U.S. Patent & Trademark Office (PTO). It is an original document (not a form), sometimes quite lengthy, which must describe and illustrate the invention, the manner and process of making and using it, in such full, clear, concise and exact detail so as to enable any person skilled in the field of the invention to make and use it. It must also have a set of claims, which, as noted above, are the numbered paragraphs at the end of the patent application that set forth the English-language definition of what the inventor regards as her invention. Click to see a typical utility patent in larger size. After it is filed in the PTO, a patent application is assigned to a patent examiner who is a specialist in the particular field of the invention. She conducts a search of the "prior art" (all previous patents and publications) and will write the applicant a letter (known as an "Office action") which will either accept or reject the claims. Initial rejections are most common and to be expected. The issuance of the initial Office action is when a period known as "patent prosecution" begins. This is basically a period of negotiations between the applicant (or her attorney) and the patent examiner concerning the scope of allowable claims. Your attorney will study the Office action with you, along with the prior art, and determine a strategy for preparing and filing a Response to the examiner, which may include an amendment to the claims. Although an applicant is not allowed to make changes or additions to the patent specification after the application is filed, it is permissible to amend the claims, by making them broader (e.g., taking out language) or narrower (e.g., putting in language) in order to better define the invention over the prior art cited by the examiner. Several exchanges of Office actions and Responses can occur between an applicant and the patent examiner before the claims are finally allowed, or the application is abandoned. To understand this process, think of a patent as a piece of property. The patent claims, then, are the fence around the property. Your patent attorney tries to get the biggest fence possible (i.e., the broadest claims), since it will be more difficult for infringers to go around your property. It will also be more valuable, since it is bigger. The patent examiner, on the other hand, tries on behalf of the public to "give away" the smallest fence possible (i.e., the narrowest claims), to make it easier for the public to circumvent your property. The correct size of the fence (scope of the claims) will depend on how close your property is to adjacent properties (i.e., the prior art). If during patent prosecution everyone does their job well, you will ideally wind up with a fence that is just the right size for your invention, i.e., not too small and not too big. It will come right up to the fences of your neighbors and abut them, and everyone will clearly know when they are inside your fence (i.e., infringing your claims) or outside your fence. How long does it last? A utility patent is good for 20 years from the day it was first filed, although you must pay the government "maintenance fees" every four years to keep the patent in force. The day it is filed, you can legally say you have "Patent Pending", although you have no legal rights to stop an infringer until the patent issues. Normally, it can take anywhere from 18 months to 3 years from the date of filing before your patent issues. This is due to the backlog in the PTO; all applications are examined in turn, in the order of filing. It is possible to expedite the prosecution of your application, if it is important to speed up patent issuance. Although a patent may not be renewed, it is possible to file so-called "improvement" patents during the life of the original patent. The "improvement", of course, must be patentable (i.e., novel and non-obvious) in its own right, but this is a method frequently used to build a wall of protection around a product line that can very difficult for a competitor to penetrate. It also minimizes the effect of the expiration of the original patent, since no one would likely want to use the original technology without all the improvements that have been patented since then. What are the advantages? If the function and/or structure of a product is unique, the protection provided by a utility patent can be broad. One can protect not only the embodiment shown and described in the patent, but, theoretically, equivalents as well. In 1982 Congress created a single, central court of appeals for all patent cases - the U.S. Court of Appeals for the Federal Circuit which sits in Washington, D.C. This court has been responsible for unifying and strengthening this country's patent laws.
Click here for sample Utility Patent Specs and Claims What are the disadvantages? Utility patents are expensive to get, expensive to maintain, and expensive to enforce. Both obtaining and enforcing utility patent rights can be a long drawn out, frustrating experience. If the prior art is very close to the new product, the patent examiner or court might not agree with you that it is sufficiently novel and non-obvious to qualify for a patent. Sometimes the closest prior art is not found during prosecution of the patent application; later discovered prior art can undermine the validity of your patent. Since patent applications are preserved in secrecy, at the time of your filing there are around 2-3 years worth of prior applications which are unknown to you yet which could be relevant "prior art" against you when they issue. There are many ways for a well-heeled infringer to attack a patent during litigation. Also, despite everyone's best efforts, the scope of protection provided by your patent claims is not always clear, and can be subject to great debate. In recent years, courts have been more reluctant to extend the scope of a utility patent claim to embodiments not actually disclosed in the application. How much does it cost? Writing a utility patent application is a labor-intensive project, and the extent of labor depends directly on the complexity of the product, and the clarity of your disclosure (i.e., the difficulty your attorney has in explaining the product in the specification). The median attorney fee in the whole U.S. to prepare the "simplest possible" utility patent application (as of 2002) was $5,504. The U.S. Government filing fee (for a "small entity") is $385, minimum. Prosecution can also be expensive, especially if several exchanges between your attorney and the PTO examiner are required. The median cost (in 2002) of preparing and filing an amendment of minimal complexity was $1,499. After the application is allowed, a Government issue fee of $665 (for a "small entity") is payable. Furthermore, after the patent issues, maintenance fees must be paid every 4 years to keep the patent in force. The current schedule of maintenance fees (U.S. Government charge only) progresses from $455 (payable after 3-1/2 years) to $1,405 (payable after 7-1/2 years) to $1,610 (payable after 11-1/2 years) (all dollar amounts are for a "small entity"; the figures double for a "large entity"). These fees are regularly increased by Congress to make the PTO "pay for itself". In addition, your attorney will charge a fee for calendaring the due dates, sending reminders, making the payments, etc., although there is no reason a patent owner could not make these maintenance fee payments herself. The bottom line, of course, is that utility patents are a rather expensive proposition. They can, however, be quite valuable when obtained and used wisely. |
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