Utility Patent vs. Design Patent

The difference between a utility patent and a design patent is that:

  • The utility patent is a trademark protection that makes sure a person has full control over his or her invention.
  • A design patent is used when you create a new design for an existing product.

What Is a Utility Patent?

The utility patent is a trademark protection that makes sure a person has full control over his or her invention. More than 90 percent of all patents issued each year are utility patents.

You receive a utility patent when you invent a new process, machine, or manufacturing system. A utility patent lists an invention's elements and declares how much it covers for the invention. A utility patent is more valuable than a design patent because the utility is the hardest part to create.

Think of the utility patent like a toaster. Many kinds of toasters exist, but they all make toast. George Schneider filed for the first American patent for an electric toaster. He came up with the toaster's function, so he got the utility patent.

The person who holds a utility patent has a lot of power. When Schneider had the toaster patent, he had approval over all other toasters. Any changes to his utility patent's toaster design had to go through him. He decided who made, used, or sold the toaster. That power existed as long as the patent was active. A utility patent guarantees the inventor has control of the product.

The government has granted more than 7.5 million utility patents. Many of them have long since expired, though. If you're lucky enough to get a utility patent, you'll pay $515 to file your claim and $720 for the patent itself.

The American government lists utility patents in five categories:

  • Composition of matter
  • Improvement of an existing idea
  • Machine
  • Manufacture
  • Process

Many inventions fall into multiple categories. For example, a new iPhone app is both a machine and a process. Even if a product falls under all five categories, the government will grant a utility patent in only one.

What is a Design Patent?

You receive a design patent when you create a new design for an existing product. Anyone can get a design patent. They're different and easier to get than utility patents because they don't (and can't) have a function.

Design patents are also cheaper than utility patents. A design patent costs only $220 to file, without added expenses. The standard patent fee is $410.

Design patents are important when a product's appearance plays a key factor in its success. Design patents only cover what's in the drawing. Anything shown gains protection once the government grants the patent claim. The only catch is that the design can't be obvious. Design patents require some creativity.

You can apply for a design patent any time you change a product's look or style without changing its utility. If the Walt Disney Company wanted to make a Mickey Mouse toaster, they could get a design patent for this product. They're creating a unique yet repeatable design. They couldn't get a utility patent because their product still toasts bread like any other toaster.

A typeface inventor named George Bruce earned the first design patent in 1842. The government has awarded only 600,000 design patents since then. Historically, people haven't seen as much value in design patents. Now, due to recent law changes, companies have much more control over their products' appearance, increasing the value of design patents.

What's the Disadvantage to a Design Patent?

Because design patents are easy to get, you might think they're better than utility patents. This is false. You'll have a harder time getting a licensing agreement with a design patent than with a utility patent.

For example, with a design patent, you only have the rights to your specific design. The Mickey Mouse toaster's design patent only applies to the Mickey Mouse design. If you have the utility patent for the toaster, you can license it to Sanrio for Hello Kitty, Disney for Mickey Mouse, HBO for Game of Thrones, and so forth. The utility patent offers more profit potential.

For this reason, you should have a patent attorney research existing patents. Don't invest in product development until you do. If someone already owns the utility patent you want, you'll have to get his or her approval before selling your product.

Business attorneys in the marketplace will offer good advice about potential pitfalls. They'll also suggest ways to change or improve your proposal. Their advice will help you earn a utility patent instead of a design patent.

Are There Any Other Kinds of Patents?

Five percent of all patent applications (more than 30,000 per year) are design patents. The third kind of patent, the plant patent, also exists. It's much less popular, though. Only 0.1% of annual patent applications are plant patents.

A plant patent is only for botanists who can show they've created a new variety of plant. To earn this patent, the applicant must prove the plant is capable of asexual reproduction. Also, its reproductive process must be the same each time, leading to the same plant output.

Yes, a plant patent is oddly specific. That's for good reason, though. People buy plants to decorate homes, yards, and buildings. People who gain plant patents stand to earn a lot of money.

How Do You Get a Utility Patent Or Design Patent?

Applying for a utility patent requires more work than applying for a design patent. This includes:

  • Proving the invention's unique function.
  • Including claim words, with which the inventor describes what the item does. It's the claim words that matter for the utility patent.

Note that utility and design patents protect the same product. Yes, rules do exist to stop double-patenting. But because utility and design patents are so different, this is not usually an issue. An inventor could also attempt to gain a copyright and trademark for their product.

Some products might need multiple design patents. Each one would cover a specific physical feature of the proposed product. Cars, for instance, require many design patents.

Design patents might cost as much as 90 percent less than utility patents. The primary cost with utility patents is in preparing the drawings.

Drawings determine the design patent claim's outcome. Because these designs are specific, the U.S. Patent and Trademark Office (USPTO) will have fewer questions or issues with the claim. That means lower attorney fees and fewer fees from the USPTO itself. You also don't have to pay maintenance fees on a design patent, which is a huge savings over utility patents.

Which Patent Is Harder to Get?

For a design patent, all you need to prove is that you've made a unique design. Showing that you've added a new element to an existing product is easy.

Earning a utility patent requires more detailed information. Proving you've built something new is difficult, as it should be. You must show that the invention works. You must also prove that it is useful and practical and has value to others.

Think about the toaster. Any new toaster is better than earlier generations of toasters. New ones have timers and toasting levels. The toaster's basic function is still the same, though. It toasts.

Anyone can get a new design patent for a toaster. A red, rectangular toaster and a curvy, white toaster are each unique models worthy of design patents, but not utility patents. To earn a utility patent you would have to invent a new way of making toast.

While a utility patent is harder to get, it offers better coverage. The utility patent has stronger protections built into the patent system. The patent covers more than just the drawings. A design patent's protection only covers the picture, which becomes the prior art. The coverage is much more limited in scope.

What Are the Patent Rules and Procedures?

To get a utility patent, you must fill out a "provisional" application.

  • The provisional application is a temporary patent request.
  • The paperwork gives you one year to file your official application.
  • Design patents don't have this system. You file when you're ready because there's less risk of competition.

Utility patents' cost is a limiting issue. They're getting more expensive, and fewer applications earn patents. During the 1990s, the government awarded more than 70 percent of applicants with utility patents. Today, only 44 percent get utility patents.

Utility patents and design patents have different term lengths and approval periods.

  • Utility patents last 20 years from the first American application. A patent lasts 17 years from its approval date. Extensions beyond 20 years are possible but rare.
  • Design patents filed before Dec. 15, 2013, last 14 years from their issuing. Any design patent issued after that time has a 15-year claim.
  • The USPTO takes, on average, two years to confirm a design patent.
  • Utility patents generally take more than three years for approval. The USPTO has to check them very carefully. With design patents, the organization runs a prior-art search. As long as nothing shows up, the design has a good chance of earning a patent.

Once you've filed for a design patent, you can list it as patent pending. You can identify it as patented once the USPTO confirms.

The patent number indicates what kind of patent it is. A design patent starts with the letter D, while utility patents have numbers and no letters.

After you've received a design patent, it will remain in force. You don't need to take any additional action. On the other hand, for a utility patent, you must pay three fees to the U.S. Patent and Trademark Office to maintain it. These payments fall at the four-year, eight-year, and 12-year mark after the utility patent's issue date. If you do not pay these fees, your utility patent will lapse.

When a patent expires, the invention enters the public domain. At this point, the inventor loses all rights and powers. This usually happens at the end of the patent duration. It can also happen if the person filing the claim fails to pay his or her fee.

You can file for both utility and design patent claims in other countries. You'll have six months after the American filing to extend the claim elsewhere. Some countries don't have patent claims, though. Your attorney can guide you through this process.

What Happens When Someone Infringes on a Design Patent?

If a regular person, who knows what an item should look like, believes another product is the same as the one with the design patent, that's infringement. The court considers a regular person to be someone who encounters a product for the first time. If they're fooled by a too-similar product, it's infringement.

This regular person test applies to the full design patent even if only minor differences exist between two products. When deciding its verdict, the court doesn't need the regular person to view the products beside each other. The only comparison is how the products look during use.

There are two tests to prove infringement:

  1. Check the pictures in the design patent. If the new product's features aren't in the prior art, it's usually not infringement. If they are, a second test applies.
  2. This test compares the similarities and differences between the patented product and the new one. If they're too similar, it's infringement.

When claiming infringement, an inventor can also claim rights to any change that's not hard to make. The courts call these additions "equivalents." They protect a patented product beyond the prior art's scope. A 2008 court ruling extended the patent protection, making design patent infringement claims easier to win. Today, the responsibility is on the person charged with stealing a design to prove they didn't.

Choosing between a utility patent and a design patent isn't difficult. In most instances, inventors will try to earn a utility patent. It's the most rewarding option if making money is the goal. You'll also have the power to decide your invention's fate, choosing who uses and sells it.

In recent years, design patents have soared in popularity because legal rulings have increased their value. Furthermore, they're cheap and easy to get.

If you need help with a utility or design patent, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.