In general, during the free initial consultation most inventors state “… I have this design that does this or does that….” In other words, inventors use the term “design” to actually describe utility or function of their invention.
The term “design” has a specific meaning in the “patent world,” which is clearly defined in the Manual of Patent Examining Procedures of the United States Patent and Trademark Office. “The design for an article consists of the visual characteristics embodied in or applied to an article. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.”
Inventors must therefore be careful to distinguish between utility vs. design patent applications. A utility patent application generally details and claims the utility, operation, or function of a product or a system whereas a design patent application claims the ornamental design (the so-called “look-and-feel” of the product).
A very broad, general way to look at design vs. utility patent applications is to view the word “design” in the design patent application as “art” work with ornamental value rather than “engineering ” work with utility. United States Patent and Trademark Office provides an excellent discussion of these two types of patents.
Of course, there are instances where both types of patent protections may be sought for the same product. As a general example, a product may have a novel function, but also have a novel design worth protecting. As a more specific example, a hand held mobile device such as a mobile phone may have a unique outer shell design in addition to having functionalities that must be protected, requiring both utility and design patent applications.
As always, you are more than welcome to call or email Patent Law Agency, LLC to learn more about design vs. utility patent applications.
By Peter Ganjian
(Former United States Patent Examiner with the United States Patent and Trademark Office)
A Southern California based U.S. Registered Patent Agent with Patent Law Agency, LLC Serving the communities of Los Angeles, Orange, Ventura, San Bernardino, Rancho Cucamonga, Ontario, Pasadena, Glendale, Burbank, and Arcadia. Patent Law Agency, LLC also serves India, Brazil, Colombia, Japan, China, Europe and the European Patent Office, Canada, and many other locations.