Design patents are one of the more misunderstood types of patents on the part of the public. Design patents are in the minority of patents that are applied for and issued. They are patents that protect the ornamental appearance, in other words, the look, of articles of manufacture. On top of being misunderstood they are often misused by both the public and certain types of patent filers.
A good example of a design patent would be a piece of furniture, perhaps the chair you are sitting on right now. Maybe your on a swivel chair that has some structural and functional features that would be eligible for utility patent protection, it might swivel especially smoothly, adjust in a certain way, has special arm rests, or any such special features, which would make it eligible for a utility patent.However, the look of the chair, which was probably designed with some care by the company that manufactured it, maybe even an outside hire or at least someone on staff to do that, but the owner probably doesn’t want people copying the look of that chair, so they can apply for and get design patent protection on the external appearance, the ornamental look of the chair. The design patent as a result is much simpler then a utility patent in general in terms of its content. It is mostly a set of good line drawings without reference numerals and without any descriptive written specifications to show the look of the chair from all angles. Design patent protection can be applied to almost any article or thing out there that has an ornamental look to it, that isn’t driven primarily by functional consideration.
The utility patent protects the functional characteristic of an item irrespective of how it looks. Again using the chair as an example it would protect the functionality of a new type of arm rest, swivel mechanism, reclining mechanism, lumbar support, or any other structural and functional feature that the inventor wants to protect. So some things, like the chair can be the subject of both utility and design patents. We can protect the structural and functional characteristics of the chair in a utility patent simultaneously if the look of the chair isn’t determined primarily or entirely by those functional features. Then we might also get a design patent on the particular look of the chair that was designed. The same can be true for lots of things, lamps i suppose, or tables, even bicycles with both a design and utility patent. So that is a consideration either a utility or design that ought to be taken into account early on in the application process, and inventors need to be aware of the differences between them.
Another reason inventors need to be aware of the differences is that people have had design patents pushed on them by previous patent council, patent filers, and often companies that help with patent work. They will encourage the client to pursue a design patent on something that has a lot of utility to it in that it would be entitled to a utility patent.That is a shame for a couple of reasons, one, design patents tend to be much narrower in terms of their scope of protection because they’re only protecting a specific look and so if you just create a different look you could avoid the design patent owners rights while keeping all the same functionality.
So if you get a design patent on something that is really eligible for a utility your getting cheated out of patent protection and intellectual property rights. The reason I think this happens is because design patents tend to be less expensive to prepare and file, the fee’s are lower, the attorney time involved is less, there’s just not that much involved and they tend to go through the patent office much easier with less argument from the examiner, because with a design patent all the examiner is looking for is if there is something similar looking out there. Utility patents are more expensive to file, and they’re usually more difficult to prosecute or get through the patent office, but if you do get a utility patent the protection scope tends to be much broader because you can exclude others from making, using or selling any item that embodies those structural and functional characteristics that you have protected, regardless of the look of the thing.