Distinction Between Design and Utility Patents

In general terms, a “utility patent” protects the way an article is

used and works (

35

U.S.C. 101

), while a “design patent” protects the way an article

looks (

35 U.S.C.

171

). The ornamental appearance for an article includes its

shape/configuration or surface ornamentation applied to the article, or both. Both

design and utility patents may be obtained on an article if invention resides both in

its utility and ornamental appearance.

While utility and design patents afford legally separate protection,

the utility and ornamentality of an article may not be easily separable. Articles of

manufacture may possess both functional and ornamental characteristics.

Some of the more common differences between design and utility patents

are summarized below:

(A) The term of a utility patent on an application filed on or after

June 8, 1995 is 20 years measured from the U.S. filing date; or if the application

contains a specific reference to an earlier application under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

, 20 years from the date on which the earliest such

application was filed, while the term of a design patent is 15 years measured from

the date of grant, if the design application was filed on or after May 13, 2015

(or 14 years if filed before May 13, 2015). (See

35 U.S.C.

173

as amended under section 102 of the Patent Law Treaties

Implementation Act, 126 Stat. at 1531-32).

(B) Maintenance fees are required for utility patents (see

37 CFR

1.20

), while no maintenance fees are required for design

patents.

(C) Design patent applications include only a single claim, while

utility patent applications can have multiple claims.

(D) Restriction between plural, distinct inventions is discretionary

on the part of the examiner in utility patent applications (see

MPEP §

803

), while it is mandatory in design patent

applications (see

MPEP § 1504.05

)

while no maintenance fees are required for design

patents.

(C) Design patent applications include only a single claim, while

utility patent applications can have multiple claims.

(D) Restriction between plural, distinct inventions is discretionary

on the part of the examiner in utility patent applications (see

MPEP §

803

), while it is mandatory in design patent

applications (see

MPEP § 1504.05

).

(E) An international application designating various countries may be

filed for utility patents under the Patent Cooperation Treaty (PCT), whereas an

international design application designating various countries may be filed for

design protection under the Hague Agreement.

See

MPEP Chapter

2900

for international design applications.

(F) Foreign priority under

35 U.S.C.

119(a)

-

(d)

can be obtained for the

filing of utility patent applications up to 1 year after the first filing in any

country subscribing to the Paris Convention, while this period is only 6 months

for design patent applications (see

35 U.S.C. 172

).

(G) Utility patent applications may claim the benefit of a

provisional application under

35 U.S.C. 119(e)

whereas

design patent applications may not. See

35 U.S.C. 172

and

37 CFR

1.78(a)(4)

.

(H) A Request for Continued Examination (RCE) under

37 CFR 1.114

may only be filed in utility and plant applications filed under

35 U.S.C.

111(a)

on or after June 8, 1995, while RCE is not available

for design applications (see

37 CFR 1.114(e)

).

(I) Continued prosecution application (CPA) practice under

37 CFR

1.53(d)

is only available for design applications filed

under 35 U.S.C. chapter 16 (see

37 CFR 1.53(d)(1)

).

(J) Utility patent applications filed on or after November 29, 2000

are subject to application publication under

35 U.S.C. 122(b)(1)(A)

,

whereas design applications filed under 35 U.S.C. chapter 16 are not subject to

application publication (see

35 U.S.C. 122(b)(2)

)

practice under

37 CFR

1.53(d)

is only available for design applications filed

under 35 U.S.C. chapter 16 (see

37 CFR 1.53(d)(1)

).

(J) Utility patent applications filed on or after November 29, 2000

are subject to application publication under

35 U.S.C. 122(b)(1)(A)

,

whereas design applications filed under 35 U.S.C. chapter 16 are not subject to

application publication (see

35 U.S.C. 122(b)(2)

).

Other distinctions between design and utility patent practice are

detailed in this chapter and

MPEP Chapter 2900

for international

design applications. Unless otherwise provided, the rules for applications for utility

patents are equally applicable to applications for design patents (

35 U.S.C. 171

and

37 CFR

1.151

and

1.1061

).