What type of patent application should I file?


If you have a patentable invention (see FAQ post: Can I Patent My Invention?) Once you have decided to file for patent protection, one of the next decisions is whether the invention will be best protected by filing a design patent, a utility patent or both.

Should I file a design patent or a utility patent?

Although design patents and utility patents cover different subject matter, it is possible for a single invention to include ornamental aspects that may be the subject of one or more design patent applications and functional aspects protectable with one or more utility patent applications.  The following brief descriptions should help you determine how to strategically use each type of patent.

Design Patents

Design patents protect the ornamental appearance of an article.  The ornamental appearance may be a pattern on the face of an item, the shape of the item itself or any other aspect of the invention that isn’t dictated by the item’s function.  Design patents are generally narrow in scope, protecting the illustrated embodiment and not much more.  This can be an advantage in that it may be easier to get a patent in a crowded field, but it can be a disadvantage when enforcing your rights.  Design patents are particularly helpful in cases such as those where the inventor/patent owner contracts with a supplier to manufacturer the patented item.  For example, a design patent may be useful in preventing the supplier from being able to use the same molds, tooling, etc. to manufacturer a product that can also be supplied to the patent holder’s competitors.  It may not prevent the competitor from designing a competing product, but it should prevent a straight rip-off.

Utility Patents

Utility patents protect the functional and/or structural aspects of the process, machine, manufacture, or composition of matter.  Utility patents are often broader in scope than design patents, covering more than just a single embodiment.  With a utility patent, an inventor can capture and protect the inventive concept, not just a single embodiment.  With respect to the strength of protection, it is almost always preferable to protect your invention by filing a utility patent application when possible.

Should I file a provisional patent application?

If you have decided to protect your invention by pursuing a utility patent application, you may then decide whether to start with a provisional patent application or proceed directly with a utility patent application.  Provisional patent applications cannot be used to postpone the filing of a design patent application.

Advantages of provisional patent applications

Provisional patent applications have fewer legal requirements and lower filing fees than utility patent applications.  Although provisional patent applications are not examined and do not issue as patents, they buy the inventor a year to file a utility patent application for the invention.  The inventor may then use that year to decide whether or not to make the further investment to continue to pursue a utility patent application.

Because provisional patent applications are less expensive to file than utility patent applications, you can use a provisional patent application to explore the marketability and profitability of a given invention before committing to the more costly utility patent application process. Alternatively, if you know you will pursue a utility patent application on a given invention, the step of filing a provisional patent application may add unnecessary costs and delays.

When considering how to protect a given aspect of your invention, there is not a lot of complexity to the analysis of what type of patent application to file.  The real complexity is identifying the aspects of your invention that may be protected.  This is where the assistance of an experienced patent attorney can be invaluable.