Eye on IP

Vol. No. 2009 - Issue No. 1
May 2009

DESIGN PATENTS - AN INEXPENSIVE ALTERNATIVE

The U.S. Patent Office issues two principal types of patents: utility patents and design patents. A utility patent protects useful features of inventions. A design patent protects the ornamental features of an invention, and not how the invention operates.

For the following reasons, we are recommending to clients to file more design patent applications:

1. A design patent application typically costs less than 25% of a utility patent application.
2. Design patents are particularly useful where a product has the potential to be "knocked off." Design patents are useful against products with an appearance the same as that of the patented product.
3. The allowance rate for a design patent application is generally much higher than that of utility patent applications. According to a recent report, design patent applications are rejected based on prior art only about 1% of the time. Contrarily, utility patents are currently issuing about 40% of the time, i.e., a 60% rejection rate.
4. A patent owner's lost profits are an automatic remedy for design patent infringement. However, when it comes to utility patents, although the patent owner can claim lost profits, proving the loss as a result of infringement is not automatic and often challenging to obtain.

"Eye on IP" is a trademark of Sheldon Mak & Anderson. Information provided in the "Eye on IP" newsletter is not intended to be a comprehensive summary of recent developments in the law, treat exhaustively the subjects covered, provide legal advice or render a legal opinion.