While it is possible for a device to be properly claimed in both utility and design applications, the two types of patents cover different types of subject matter. A design patent is a patent that claims and protects an ornamental design embodied in or applied to an article of manufacture. The protection afforded by a design patent is governed by 35 U.S.C. §371 which states that a patent may be obtained for a “…new, original, and ornamental design for an article of manufacture…”. This includes surface ornamentation, the configuration of the article of manufacture itself or both (see MPEP 1502). In addition, the design cannot exist as surface ornamentation alone, i.e. it must be inseparable from the article to which it is applied. A design patent does not protect the article itself, its structure or use, in contrast to a utility patent. Depending on what the design is and how it is used, trademark or copyright protection may also be appropriate for the same design.
In general, the same requirements for patentability apply to both design and utility applications. That is to say that design patent applications must claim subject matter that is sufficiently described, novel and nonobvious. However, analyzing designs is inherently different than analyzing structures. When selecting prior art references, the Examiner does not need to confine themselves to a particular technology area or type of article if the claimed design is surface ornamentation. However, if the design is embodied in the shape or form of the article, then the Examiner must limit their search to similar articles. In reviewing patent applications against the prior art, Examiners are to determine “whether the design would have been obvious to a designer of ordinary skill in the art with the claimed type of article.” (See MPEP 1504.03). Moreover, the design in the patent application must be considered against something in existence, i.e., the Examiner is not free to select various design elements from a number of different references to create a design that does not otherwise exist in the prior art. (182 F.2d 207, 86 USPQ 68 at 70 (CCPA 1950)).
Similarly, the infringement analysis is different for designs. For purposes of infringement, the Courts use the “ordinary observer test” to determine if an accused design infringes a patented design. That test states that if an ordinary observer, not an expert, views the patented design and the accused design and in doing so determines the designs are substantially the same such as to deceive the consumer into thinking the accused design is the patented design, then the accused design infringes the patented design. The designs are not supposed to be compared side by side as consumers will not always encounter the two designs side by side. Nor are the designs supposed to be completely different – the Courts have reasoned that there is no design in existence that cannot be distinguished from a similar design by an expert. Moreover, the Courts have ruled that the accused design must also include the novel elements of the patented design, i.e., the analysis must consider which elements of the patented design are novel and thus protected by the patent. Another way of stating this requirement is that the ordinary observer test must be conducted as if the observer had viewed the two designs in light of the prior art. Aspects of the design resulting from the purely functional aspects of the product in which the design is embodied are not protectable, but the placement and arrangement of functional portions of the product can be protectable. Distinguishing between ornamental and functional aspects of the design is something that needs to be correctly assessed prior to filing the application.
Drafting and filing a design patent is a lot different than drafting a utility application. In design patents there is a single claim that references the attached figures; in other words, the figures define the scope of the patent’s claims and thus the scope of the patent’s protection. That also means that the figures are the patent’s disclosure and must confirm to the written description requirement in 35 U.S.C. §112. Design patent applications may seem deceptively simple to draft and file, but the ability to fix errors with the original filing is rather limited in that most changes to the figures will be rejected as new matter. Thus it is particularly important to have accurate, high quality figures submitted with the application as the USPTO has numerous rules that govern everything from shading and font size to broken lines.
Furthermore, international protection varies from that of utility patents. International protection of design patents is not governed by the Paris Convention or the Patent Cooperation Treaty (PCT), but rather it is the Hague Convention that allows for the international registration of industrial designs. Either type of application can be filed claiming priority to an earlier filed application; but when filing a design patent, one only has 6 months to claim priority to an earlier filed application as opposed to 12 months for utility applications.
Whether or not a design patent will provide the type of protection that a designer needs is a matter best addressed prior to filing a design patent application. Consult a qualified professional to discuss your individual needs.