Utility Patent Application Vs. Design Patent Application: The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing the utility patent application and design patent application.  I’ll explain what they are, what to know before filing either, and why they are important tools for the protection of an invention.


A utility patent application, as the name implies, is a patent application that protects an invention with utility, i.e. a useful function.  There are specific requirements that must be met for a utility patent application filing to be accepted and for the invention itself to qualify for protection.  The utility patent application filing requirements are defined by the USPTO.  In addition, for an invention to qualify for utility patent protection, it must be confirmed as being either a machine, a process, an article of manufacturing (manufacture), or composition of matter.  Alternatively, improvements on existing inventions also qualify for protection. Abstract ideas, laws of nature, and natural phenomena do not qualify for patent protection.

What a Design Patent Application is:

A design patent application is a patent application that is filed to protect a novel design, i.e. it protects the unique ornamental characteristic(s) displayed on/by a utilitarian (useful) article. The unique characteristic of the article could include its original surface ornamentation, the overall shape, or both.   There are also specific requirements that must be met for a design patent application filing to be accepted and for the invention itself to qualify for protection. The design patent application filing requirements are defined by the USPTO.  In addition to the design application filing requirements, to qualify for patent protection, a design must be both new and non-obvious.  It must also be a design of a utilitarian article and it must not affect the function of the article. If the design is dictated by the way the invention works, then the invention is utilitarian and would instead be protected by filing a utility patent application.

A design application does not protect an idea/invention; it protects only the ornamental design of what is depicted in the patent drawings.  No variations of the design are protected. Any variations should be protected by filing separate design patent application(s). Multiple design patents combine to make a patent portfolio capable of thwarting copy-cats attempting to design around a patented design.

It is possible to file for and patent both the utilitarian and design aspects of one invention.  This type of dual protection is sought for the majority of products on the market. There is a rule against double patenting, so it is imperative that protection for the same aspects of one invention isn’t sought in two different applications.  A patent attorney can assist in identifying what aspects of an invention should be filed for protection in a utility vs. design application.

What to Know Before Filing:

Filing a utility or design patent application, as with all patent filings, does not guarantee a patent will be issued.  To become a patent worthy of issuance, an application must undergo patent prosecution. During this process, a patent examiner compares the as-filed application to the available prior art, i.e. the patents previously published or issued by the USPTO.

To prepare either application for this step, the best approach is to request a patent attorney to conduct a preliminary patentability search and opinion before the patent application is filed. If the search has positive results, the application can be pursued with more confidence, but it does not guarantee that a patent will be issued.  It should be noted that even if the functional aspect(s) of the utilitarian article are already patented, it is still possible to receive a patent on a new design.

After a thorough search, the next step in the process is filing the patent application with the USPTO.  It is important to understand that the U.S. is currently under the “first-to-file” rule. This rule proclaims that the first inventor to file for an invention with the USPTO has claim to the patent rights. This rule applies to all types of patents. With the assistance of an experienced legal team, you can secure “patent pending status”  by filing the required documentation inline with the rules set out by the USPTO.

Once filed, either type of application will enter the “pre-examination phase” in which the application is reviewed by the USPTO for its adherence to the filing-formalities.  After an application passes this phase, it is placed in a que with other patent applications to await formal examination by a USPTO patent examiner. For a design application, it can take 6-9 months to begin the examination phase.  Examination for a utility patent application can take 18-24 months.

The timeline for filing foreign applications is also different depending on which type of patent application is filed.  To claim the benefit of a utility application filing date, applications seeking protection in foreign countries must be filed within twelve-months of filing the U.S. utility application.  The time period for a design application is shorter than the deadline imposed on utility applications. To claim the benefit of a design application filing date, applications seeking protection in foreign countries must be filed within six-months of filing the U.S. design application.  Additionally, a U.S. application can not claim the benefit of a foreign design application filing date, while a utility application can. If previously filed or patented in another country, a design would need to be re-filed in the U.S. and receive a new filing date assigned by the USPTO.

Unlike utility patent applications, design applications are never published and made available to the public.  If either type of application is approved by the patent examiner, examination will be closed, and the patent will be allowed.  With allowance, an issue fee is due before the application can be officially issued as a patent. The issue fee for a design patent is significantly less.

An issued design patent does not need to be maintained with the payment of a maintenance fee to the USPTO, unlike utility patent applications.  Judged from the date it is issued, the term of a design patent is currently 15 years. Design patents filed before May 13, 2015 have a shorter term of 14 years from issuance. An issued utility patent must  be maintained with the payment of a maintenance fee to the USPTO at intervals of 3.5, 7.5, and 11.5 years judged from the date the patent was issued. If the maintenance fees are not paid, the patent will expire and the rights it provided will be lost. If all maintenance fees are paid, patent protection will last for 20-years from the date the patent application was filed.

It is important to understand that any issued patent does not grant the patent owner the right to make, use, or sell the patented invention.  A patent attorney must conduct a freedom-to-operate search and analysis in order to determine this ability.  Patent protection alone only grants the patent owner the exclusive right to prevent others from using and marketing the claimed invention.

Why Utility and Design Patent Applications Are Important Tools:

Both utility and design patent applications are important tools, because the resulting certified patents allow the patent owner exclusive rights to protect their invention.  Design patents specifically are great for helping to prevent knock-offs and counterfeiting. With a design patent, you can establish market credibility by thwarting copiers. Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, all patents are not only important to the inventors or companies that own them, but they are also invaluable to society, which prospers from them.

Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and is just a call away.  We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a utility or design application or other patent applications.