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Utility Patent vs. Design Patent

What is the difference between a utility patent and a design patent? When a person applies for or is granted a patent, the application is categorized as a utility, a design, or a plant patent. It is important that inventions are properly filed as belonging to one of these categories. According to the USPTO website,

“A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.”

In other words, a utility patent is granted if the invention provides a new function, unlike one provided by any invention already in existence. The design patent is granted when the invention’s external appearance is the novel component of the invention. If the exterior design is unlike any design that exists, then the application should be filed as a design patent.

                Can an invention be categorized as both a design patent and a utility patent? Yes, this happens. Often, inventors create inventions that meet both of these standards. When this occurs, the invention is filed using two separate applications under both categories. Oftentimes, the invention provides users with a new function, as well as a novel external appearance, which may or may not be crucial to its function. It can be difficult to differentiate, but if both the appearance and the function are new, the inventor can apply for both patents.

                What is the lifespan of the patent when filed as a utility and/or design? When filing a design patent, the invention has a lifespan shorter than that of a utility patent. The design patent lifespan is 14 years from the date the patent is finally issued. A utility patent is granted a lifespan of 20 years from the date the patent was first filed. These lifespan periods are referred to as patent term. Patent rights are guarded or protected for a certain amount of time so individuals can further promote, make, or sell their inventions without having to worry about the same invention being released by someone else. Patent protection prevents other inventors from stepping over boundaries that other inventors have already claimed. If a patent goes abandoned, however, the protection ceases to exist any longer. In order to avoid this, individuals must stay current on paying their maintenance fees to the USPTO.

                As an inventor, it is important that ideas and rights are protected. Filing for a patent is one of the first steps toward protecting an idea. To best understand design vs. utility patents, an individual should ask himself or herself “Is this invention providing a new function?” OR “are the ornamental features what make my invention novel?” These questions aid in determining under which category an inventor should file a patent application. It is important that inventors are aware of these categorizes of patent applications in order to securely protect their inventions to the full

What Types of Works does a Copyright Protect?

A copyright is a form of intellectual property that protects works of authorship. Copyrights provide the author of the work with protection from unauthorized sales, distribution, copying, and sales of their work. They do not protect the holder of the work, but only the person legally entitled to the rights. This will be the author or any person the author has assigned the rights to the work. In order to register for a copyright you must be the holder of the rights. The Library of Congress will not accept applications from third parties.

These applications include: art, drama, music, and literature. Examples of copyrightable works include: songs, lyrics, movies, dramatic performances, scripts, novels, collections of short stories, poetry, computer software, and the contents of a website. All of these works are the physical expression of a person’s creative brainpower.

What types of works are not protected by copyrights? Abstract ideas that are never produced in a physical form, facts, domain names, systems, and methods of use are not copyrightable. But, a copyright CAN protect the arrangement or expression of these things in a physical form. For example, mathematical equations are not copyrightable, but a book containing those equations can be protected under copyright.  Brand names, company names, band names, slogans, and logos are also not copyrightable as these are covered by Trademark.

People often wish to know if they can copyright their particular recipes. If the recipe is merely a list of ingredients, then the recipe cannot be copyright because it is just a listing of facts/items. But, if the recipe includes descriptions of how to combine the ingredients, along with any necessary narrative, it can be copyrighted. Recipe collections, such as cook books, are also protectable because they are a physical arrangement of the creative works.

Because copyrights are creative works in physical form, they are most commonly used by artists, architects, and software designers. Writes, musicians, painters, and website developers alike all utilize copyrights to protect their art from persons who would copy and distribute the work for their own profit. If you have written a book, taken photographs, painted a portrait, produced a musical demo, written a piece of software, or created any other type of artistic work, a copyright might be the right choice for you. You should consult an attorney prior to publishing your work if at all possible, to make sure you have the protection best suited to your needs. 

What is a trademark?

A trademark is a device used by a merchant to identify its goods or services and to distinguish them from those of others.  It is a convenient means for facilitating the protection of one’s good will in trade by placing a distinguishing mark or symbol (a commercial signature) upon the merchandise or the package in which it is sold.

What kinds of trademarks are available for use?

There are various types of trademarks that can be registered with the Patent and Trademark Office.  They are generally broken up into four distinct categories.

1.  Trademarks:  Any word, name, symbol, or device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce.  The mark must identify and distinguish the goods from those manufactured or sold by others and must indicate the source of the goods, even if that source is unknown.  An example would be Nike, Coca-Cola, Apple, or Ford.

2.  Service Mark:  Any word, name, symbol, or device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce.  The mark must identify and distinguish the services of one person from the services of others and must indicate the source of the services, even if that source is unknown.  An example would be Visa or the MGM lion’s roar.

3.  Certification Mark:  Any word, name, symbol, or device, or any combination thereof used by a person other than its owner, or which its owner has a bona fide intention to permit a person other than the owner to use in commerce to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services.  Alternately, a certification mark can identify that the work or labor on the goods or services was performed by members of a union or other organization.  An example of this would be the ADA mark on toothpaste.

4.  Collective Mark:  Any trademark or service mark used by the members of a cooperative, an association, or other collective group or organization, or which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce.  These generally include marks indicating membership in a union, an association, or other organization.  An example would be FTD for florists or a union logo.


What Is A Design Patent

A patent is an intellectual property document that grants an owner the exclusive rights to their new and unobvious invention in exchange for disclosing how to make and use their invention. Their reward for disclosing this information is that for a set amount of time the owner is granted the exclusive rights to their invention. These rights enable the patent owner to prevent others from making, using, distributing, or selling their patented invention without permission before doing so.

One of the main types of patents is a Design Patent. This type of patent is granted to anyone inventing a new, original, and ornamental design for an article of manufacture, and permits the owner to exclude others from making, using, or selling the patented design for a period of fourteen years from the date of the granted patent (1). The difference between a utility patent (1) and a Design Patent is that the utility patent protects the function of the invention while the design patent is usually directed towards the external appearance of the invention.

Design Patents are used by those who realize an aesthetic difference between their product and those already in the market, or by those who wish to have coverage of the design of their invention in addition to its utility. Examples of notable designs that have been patented include that of the original Coca-Cola bottle design (2), the design patent on the Statue Of Liberty  (3), and the first design patent (4)(5).

Although some Design Patents are used by large corporations, they can be as simple as a new eyeglass frame design (6), a stuffed animal design (7) (8), or a new footwear style (9).

A Design Patent protects your new invention, no matter how large or small; and you are eligible for a patent on your idea as long as your design is aesthetically different and unobvious from those that are known already.










Patentability; Are Some Concepts Contrary to Law Protectable?

In the United States Title 35 of the United States Code U.S.C. governs the intellectual property right to patent an invention.  The right to a patent is actually unique in law as it provides for one of the very limited occasions where the government will impose what is considered in the legal world as a negative right.  A patent actually does not afford an inventor a specific right as much as it operates to restrain the right of another.  In the case of a patent the right that is restrained is the right of all others to sell, manufacture or distribute the patented invention without the approval and often compensation of the holder of the patent.

Some concepts that land on a desk at the United States Patent and Trademark office USPTO for review are undoubtedly of almost an unmeasurable value to society. Some set us ahead by leaps and bounds as a society, or even in just a niche area of business or science. All in all, one common goal is furthered, the invention serves for the greater good of our society in some capacity.  Well, what about those inventions that try our minds and our conscience to uncover the value they might add to individuals, or to society at large? Some concepts pertain to materials and inventions that are inherently dangerous and/or outright illegal.

Under current U.S. patent law, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.”  A patent cannot merely protect an idea, rather the idea must fall into one of the following: 1) A new composition, for example a pharmaceutical drug; 2) A method or process such as a new way to manufacture plaster; 3) A new variety of plant; 4) A manufactured article such as a pen; and 5) A machine, defined as something with moving parts. Falling into one of these categories is merely a first step toward patentability. The idea must also be novel, and not obvious. 

More importantly, there is a utility requirement for the invention. The invention must physically accomplish something or it will fail the utility test. This test is where an illegal or highly dangerous concept can be rejected by the USPTO. In contract the patent office gives special priority examination to inventions that counter terrorism, or acts that a violent, dangerous to human life, and those that are a violation of the criminal laws of the United States. It seems that the USPTO is committed to furthering the best interest of the safety of individuals, even at the expense of some patent applications or would be inventors.

In theory, a patent is not a typical right bestowed upon an inventor, remember as we identified earlier it operates as a negative right, barring of others to manufacture, sell or license the protected invention. In the case of illegal products, technically are not all individuals prohibited from manufacturing, selling, licensing or even possessing such a product?  The duty rests upon the USPTO to properly identify dangerous and illegal products and protect the public from them.  For more on this topic refer to the USPTO website for additional information on the process of patent rejection.

Filing For a Provisional Patent Application

What does it mean when someone invents something and claims that he or she is “filing for a provisional patent application?”  Filing for patent rights has many steps. Further, those individuals amidst the journey of filing a patent can opt to retain a “place holder” along the way, as he or she continues to work on solidifying his or her patent rights. This place holder is known as the “provisional patent,” which the individual can have filed onto an electronic database. The provisional document is typically a summarized explanation of his or her invention. The basic intent of the provisional document is to summarize the invention as well as to pinpoint what makes the inventor’s invention novel and/or patentable. The writer must keep in mind, when creating the document,

‘What are the patentable features?’

This document also entails descriptions of the drawings, provided by the inventor. These drawings aid the writer in explaining the invention.

In order for an individual to file his or her provisional patent, he or she must first fill out two forms provided by the USPTO office. These documents also assist the writer, especially i if the writer of the document is not the inventor himself/ herself. If the provisional patent application is filed, but lacks a description of the invention or drawings and/or explanation of the provided drawings, the patent office rejects the document, and the inventor is, consequently, not granted a filing date at that time. Additionally, there are deadlines for when inventors can file their provisional patent applications. These documents can be filed “up to a year following the date of first sale, offer for sale, public use, or publication of the invention.” (

Who is the provisional patent allegedly written to? This document is to be written to an imaginary individual whom is known in the patent world as PHOSITA. Further, PHOSITA is not a sea monster or a warrior, although the term does sound fierce, rather PHOSITA refers to “person having ordinary skill in the art.” (

Therefore, this document is to be written in a way that pertains to the individual previously described and donned “PHOSITA.” When an individual completes the provisional patent application, he or she has a lasting provisional patent application in place for 12 months.


What Happens Once My Patent Application is Approved by a Patent Examiner?

The patent prosecution process ends when the patent application is approved or abandoned. The legal term for approval of a patent application is “allowance.” If your case is allowed, then the patent examiner is satisfied that the application is in the proper format, without inconsistencies, and complies with applicable patent laws.

But what happens next?

After an application is allowed, the United States Patent and Trademark Office charges “issue & publication” fees. These fees cover the cost of finalizing your patent application, assigning the patent number, preparing the document for printing, and print a lovely bound copy with a shiny gold seal. You will have three months from the date the Notice of Allowance is sent to pay these fees or your application will be abandoned. Once the fees are paid the U.S.P.T.O will “issue” the patent, assign it a number and print the formal copy. This copy is sent to your attorney, or whomever represents you in the case. You should expect to wait 1-2 months on average to receive your U.S. Patent.

Current .S. Utility Patent Issue & Publication Fees:

Publication: 300

Standard Issue Fee: 1780.00

Small Entity Issue Fee: 890.00

Micro-Entity Issue Fee: 445.00

  • These fees change each October
  • Check with your attorney or representative foe information on fee rates. You may be eligible for reduced fees.



New filing system for your patents

So what do I need to know?

In a first-to-file system, the first person to file a patent application will have the rights to that invention. In other words, the first person to claim an invention with the USPTO is recognized as the inventor.


Under this new system, the process is similar to going to the court house to file a document such as a marriage certificate or a deed on your new house. Even though you are married in a church or you have completed a real estate transaction until you file the proper documents with the court, your marriage or property right is not recognized by the state. This is commonly referred to as race notice. Race notice is a form of constructive notice, wherein if you are the first to file with the government, then you effectively inform the rest of the world that you have an invention. With the AIA, anyone else can claim the same invention until you file with the USPTO. Should you delay filing, then you are susceptible to the real possibility that someone else may claim your idea. This form of statute compels and, in a way, rewards, inventors to disclose their inventions to the public in order to make contributions to society. Otherwise, an inventor may sit on an idea for an extended period of time and not even utilize the idea.


How does this affect me with my application, whether it is for a provisional patent application or a nonprovisional patent application?


In 2011, the America Invents Act (AIA) was signed into law by President Obama. This moved the country’s first-to-invent system to a first-to-file system. Previously, if you invented something, it meant that you had the rights to the invention and could file the idea with the USPTO at your leisure. This is a simplified example, but as long as you invented something, and if someone attempted to claim they invented the same idea after you, you were protected. With the AIA, there is a very important change in the process.


An example of the differences between the first-to-invent and first-to-file systems:


Under the previous first-to-invent system (the AIA is not in effect):

On January 1, 2013, an inventor creates a new invention.

On January 15, 2013, a separate company independently creates the same invention.

On February 1, 2013, the company files a nonprovisional patent application disclosing the invention.

On February 15, 2013, the inventor files a nonprovisional patent application with the USPTO.

Under the above facts, the inventor will be protected under the previous first-to-invent system by proving that he or she did create the invention prior to the company.

Under the first-to-file system (the AIA is now in effect):

On January 1, 2014, an inventor creates a new invention.

On January 15, 2014, a separate company independently creates the same invention.

On February 1, 2014, the company files a nonprovisional patent application disclosing the invention.

On February 15, 2014, the inventor files a nonprovisional patent application with the USPTO.

Under the above facts, the inventor will most likely be precluded from obtaining patent protection because the company filed an application with the USPTO before the inventor. This situation illustrates that an inventor contemplating or procrastinating to obtain patent protection can very likely lose the ability to do so.


Anything else I need to know?

If you  filed an application with the USPTO prior to March 16, 2013, when this section of the AIA became effective, then you still retain the rights and privileges under first-to-invent system. 

Patentable Differences

Of all the ways an invention is rejected by the USPTO, two of the most common ones are anticipation and obviousness.  Anticipation is when every single feature of an invention is found in an existing piece of “prior art” (a patent, a patent application, or another disclosure.) Obviousness is when an invention is an obvious combination of two or more pieces of prior art.  These rejections must be overcome, which is accomplished by argument, evidence, or amendment of the patent application.

While there are many arguments that can be made to overcome a rejection, the USPTO and the courts have decided that the following differences are insufficient to distinguish an invention from the prior art.

  1.  Aesthetic design change.  The courts have said on numerous occasions that matters related to ornamentation that have no mechanical function cannot be relied upon to distinguish an invention from those that already exist. When the only differences are aesthetic, and inventor should seek a design patent.
  2. Elimination of a step or an element.  Removing a part of an invention or its function is considered an obvious change if the function of the element is not desired.  Similarly, removing an element while retaining the element’s function may be considered obvious without further evidence as to how the removal of the element is a mechanical difference.
  3. Changes in size/shape/proportion.  Making something larger, smaller, or different in shape and/or proportion is often an insufficient difference unless there is a nonobvious advantage created by the change.
  4. Adding ingredients.  Adding additional ingredients that do not change the function of an invention is an insufficient difference for patentability.
  5. Changing a power source.  Adding a battery, solar powered charger, or another type of existing energy source to an invention is insufficient for distinguishing a new invention from prior art devices that do not include the same power source.

A Myriad of Misconceptions


            Journalists and legal analysts have once again worked themselves up into a nearly bacchanalian revelry as the United States Supreme Court handed down another opinion addressing patent eligible subject matter this past week. Long the subject of public fascination, patent eligible subject matter cases include lengthy legal and philosophical discussion on whether a particular type of idea or invention should be entitled to patent protection pursuant to Article 1, Section 8, Clause 8 of the U.S. constitution.  (“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). The Supreme Court has long held that laws of nature, natural phenomenon and abstract ideas are not patentable because they are available to all people everywhere and should be reserved for none. At their core, these cases tackle the question “is this really an invention,” a question upon which science enthusiasts, talking heads, and even the general public enjoy weighing in. Yet the fervor created by the media rush to play legal scholar glosses over the nuance of these cases and fails to acknowledge that often the most significant aspect of these cases is what the Supreme Court leaves unsaid.


The Association for Molecular Pathology v. Myriad Genetics, Inc. opinion, delivered by Justice Clarence Thomas on June 13, 2013 addressed the sexy new topic of isolated Deoxyribonucleic Acid (DNA) strands and complementary DNA (cDNA). Myriad is the holder of several patents claiming isolated parts of the BRCA 1 & 2 gene; as well as methods of testing for the gene. A common public misconception in this case is that Myriad did not perform any innovative activities, and was merely attempting to patent a gene. This is not true. DNA isolation is not something that the average person can accomplish at home in their spare time (at least I know I can’t) Isolated DNA strands are portions of genes that have been removed from their parent DNA strand via chemical severing of the covalent bonds that connect amino acids. The base question at issue in the case is whether this act of science, this extraction process, is an inventive step sufficient to render a naturally occurring phenomenon into patent eligible subject matter.


Doesn’t seem like a weighty enough issue to warrant a media hailstorm? But wait, there’s more. The BRCA 1  & 2 genes are more commonly known as “the breast cancer genes” responsible for increasing a carrier’s chances of developing breast cancer from the average 12-13%up to 60-80%. See, Assoc. for Molecular Pathology v Myriad Genetics, Inc., 4 (569 U.S. __)(2013). If Myriad and the scores of other companies who own isolated DNA patents are in possession of valid patents, then they can stop other genetic testing facilities from isolating their respective genes. The end result is a single company holding an effective monopoly on genetic testing for a particular gene, regardless of the technique used. If the isolated genes are not patent eligible subject matter, then only the specific methods of testing for the gene will be protected by patents, thereby opening markets to competition in genetic testing services as companies develop new and innovative testing methods. Greater market diversification brings down prices and stimulates new developments. Thus, the question of whether isolated DNA is patent eligible subject matter is important because it deeply affects the availability of genetic testing and the potential for ongoing development in these fields.


Patent eligibility of biological subject matter was addressed by the Supreme Court in Diamond v. Chakrabarty, a case involving the invention of bacteria that were genetically modified in a laboratory to give them the ability to break down ingested oil.  (447 U.S. 308)(1980). The Chakrabarty Court held that the bacterium were patentable because they were “human made micro-organisms” that did not occur in nature without the intervention of science. Conversely, in Funk Broth­ers Seed Co. v. Kalo Inoculants Co., 333 U. S. 127 (1948), the inventor combined several naturally occurring bacteria into vegetable crop inoculants. Individually, the bacteria were known by farmers to act as inoculants but were not known in combination. The Supreme Court invalidated the inventor’s patent stating that he had not created anything, but had merely cleverly combined known natural phenomenon.


The difficulty presented by the Myriad case arises from the fact that isolation of DNA borrows from both Charkrabarty and Funk Brothers. Like the Chakrabarty inventor, Myriad has exerted scientific efforts and used complex artificial processes for extracting the DNA it seeks to patent, and we as scientists, lawyers, and intrigued onlookers, appreciate and empathize with the significant costs in time and money that such developments incur. Unfortunately for Myriad, it is also similar to the Funk Brothers inventor who did not create anything new, but instead utilized a naturally occurring phenomenon. The Supreme Court held that “extensive effort alone is insufficient” and ultimately ruled that isolated DNA is not patentable subject matter because the parent DNA is a naturally occurring phenomenon  Assoc. for Molecular Pathology v Myriad Genetics, Inc., 14 (569 U.S. __)(2013).


Interestingly, in this case, the Court decided to say exactly what it wasn’t saying. Justice Thomas articulated the Court’s position that complimentary DNA (cDNA), which is manmade, is not a naturally occurring phenomenon and does not need to be addressed. The Court also stated that no method claims were at issue and that new and novel methods for isolating DNA could be patentable. Lastly, the Court declined to address the issue of manmade amino acid arrangements that result in artificial DNA. Assoc. for Molecular Pathology v Myriad Genetics, Inc., 16-17 (569 U.S. __)(2013). With these deference’s in hand, the patent community is free to explore creative claiming strategies for effectively obtaining coverage on DNA products, without actually claiming the DNA itself.

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