In the United States, there are three types of patents that the USPTO can issue – utility, design, and plant patents. Utility patents are by far the most common. If an invention has any kind of function, a utility patent is what the client needs. For example, if what makes an invention truly novel and unique has to do with the ability of a spring to propel a lever in a rapid manner, that function can best be protected via a utility patent application. There may be other ways for the inventor to be protected, but protecting the function of the spring propelling the lever can only be done in the utility patent. Utility patents are by far the most expensive to procure and maintain. Filing, search, examination, and issue fees that the USPTO charges are highest for utility patent applications. Furthermore, utility patents, at least quality ones that an inventor wants to stand behind in court, generally require significant attorney time to produce. Though prosecution with a patent examiner could happen to be relatively short and easy, e.g., the patent examiner grants the patent after only one or two communications, the time to draft and layer claims, make sure those claims are properly supported in the disclosure of the application, and generate/number drawings, to name a few, takes time and care, increasing costs. While corners can be cut, if they are, and an opposing counsel notices during future litigation, the utility patent may not be strong enough to withstand scrutiny. For this reason, utility patents are the most expensive type of patent. They are also the most common type of patent, recognized in every jurisdiction around the world. Furthermore, though not always, utility patents are generally involved when there is very expensive patent litigation.
It is also worth noting that in the United States, the life of a utility patent is 20 years from the date the utility patent application is filed. As such, unlike trademarks, once this time period is over, the subject matter of the utility patent is no longer protected, but rather enters the public domain. That is, patents cannot be renewed, and once, for utility patents, the 20 year time period expires, anyone can make, use, or sell the subject matter of the patent. For this reason, many people often do not decide to procure utility patents for their inventions. Trade secret protection also provides a mechanism to protect an inventor, and if the equities of the temporary monopoly provided by the utility patent do not outweigh the costs of public disclosure of the technology, public usage of the subject matter of any patents on the technology once they expire, and the costs of procuring the patents, then these people may decide to keep the keys to their invention private.
The second type of patent recognized in the United States is a design patent. Design patents are sought far less often than utility patents, and are not quite as desirable, but that does not mean they should not be thought less of in any respect when deciding how an inventor should best be protected. There have been patent litigation lawsuits where inventors have been able to secure hundreds of millions of dollars based on their design patents. A few of the advantages of design patents are that they are significantly less expensive to procure (e.g., lower USPTO costs and reduced attorney’s fees), take significantly less time to procure, and are generally less difficult to procure than utility patents.
Design patents, unlike utility patents, protect the surface ornamentation of an invention. They focus on how an invention appears, rather than how it functions. As such, they would not protect the manner in which the spring propelled the lever, but they would be able to protect the look and feel of the invention. Specifically, a design patent on this invention might protect the relationship of components and the size of components with respect to each other. For example, the shape of the spring/lever, positioning of the spring with respect to the lever, and the size of the spring with respect to the lever, would all be aspects of the invention that could be protected in a design patent. Procuring the design patent is done essentially by filing a set of carefully prepared patent drawings that show the invention from a number of different views. Upon being examined at the USPTO, the patent examiner will analyze the drawings to make sure they comply with formal requirements, and also to make sure they show a novel/nonobvious invention. Although these patent applications are granted more easily than utility patents, it is best that they not be prepared with haste. Design patent examiners will study the patent drawings with great care. If even a small line in the drawings is not as it should be, for example is dashed when it should be solid, the design patent examiner will reject the application. Rectifying deficiencies noted by a design patent examiner can be difficult and sometimes impossible, a situation which would result in abandoning an application. As such, the drawings in a design patent must be prepared meticulously before that patent application is filed. Patent attorneys typically hire expert draftspersons to prepare these drawings. Paying a draftsperson to prepare the drawings costs significantly less than paying a patent attorney to prepare them. Furthermore, most all patent attorneys, at least the ones I’ve worked with, do not make it a part of their practice to prepare design patent drawings by themselves. What the patent attorneys do though, is evaluate and edit the drawings prepared by the draftspersons. This is a common practice, having draftspersons prepare drawings while patent attorneys edit, file, and prosecute them.
One of the reasons why design patents are useful is to protect against a blatant plagiarist. In practice, many competitors will at least attempt to design around or otherwise distinguish their product from your clients in some way. However, there are situations where competitors do not hide their copying. If they have blatantly copied what your client is doing, such that the surface ornamentation, e.g., the look and feel, is exactly the same, then securing a victory in a design patent infringement case may not be that difficult, and may be as useful as if you had a utility patent. Design patents also have a life of 14 years from the date on which they are filed, and like the utility patent, they cannot be renewed to extend coverage.
A first other item to consider when deciding whether to file a design patent is that they do not currently require maintenance fees to be paid to the USPTO. Utility patents, by way of contrast, require that three separate payments, typically several thousands of dollars each, be made during their life in order for the patent to be maintained and enforceable. If these maintenance fees are not paid, the utility patent is no longer enforceable and enters the public domain. For design patents, the USPTO has decided to not make this a requirement. A second item to consider is that, unlike utility patents, design patents cannot claim priority to an earlier filed provisional patent application.
Additionally, because design patents are relatively simple, e.g., a set of patent drawings versus utility patents which involve patent drawings, detailed disclosure of invention, and complex claim language, prosecuting them to issuance takes relatively little time. Receiving a first Office Action from the USPTO on a design patent can take anywhere from 6 months to 1.5 years from the date the design patent application is filed, as opposed to 1 year to 2.5 years for a utility patent. Even once a first Office Action is received, it is very common that a design patent will be issued in short order thereafter. Contrast this with utility patent application prosecution, which is much less predictable, and can be much more time consuming and costly. For this reason, design patents are an Intellectual Property vehicle that should not be ignored when considering how to armor your client. They aren’t as fancy as the utility patent, but they can be potent and they are often very easy to procure.
Finally, the USPTO has a third class of patents that they issue – plant patents. Plant patents are granted to inventors who have invented and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or plant found in an uncultivated state. Like the utility patent, plant patents are enforceable for 20 years from the date on which they are filed.
This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.
©John P. Powers, 2020, all rights reserved.