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Why do a Design Patent w/ or instead of a Utility?
By way of background,
ornamental designs that have only aesthetic, visual qualities are protected by
Design Patents, and inventions that have functional usefulness that solve some
kind of problem are protected by Utility Patents. It is common to protect
the function or manufacture of a structure with a Utility Patent, and the
appearance of the same structure with a Design Patent. Generally, design
patents protect the same or obvious variations to the look of something. So,
the functionality (i.e., utility) of the invention will not be relevant.
However, the scope of protection should be thought of as the range of similarly
shaped (e.g., styled) and ornamentally embellished items. The protection
may be thought of more about what an artist would change to get a certain look,
and not what an engineer would do to achieve a certain function.
Generally, if you believe you have a unique function that you want to protect
then you should do a provisional/utility application, and if you believe you
have a unique look that you want to protect you should do a design patent, if
you want to protect both a novel function and look, then you would want to do
both budget permitting.
There is almost never a
conflict between Design and Utility patents because design patents do not
disclose functionality, only appearance, and are somewhat more narrow in
scope. When applicable, you can grab much broader protection by getting a
Design and Utility patents. That is, in court, there are completely
different sets of law that governs infringement of Design patents, so where the
Utility patent might fail to win infringement, a Design patent could win by
different legal means.
Design and Utility
patents are practically mutually exclusive of each other except when the
claimed function in the Utility can be completely understood by the drawing in
the Design patent. When your invention's functional novelties are very
much tied to the structural shape of the design, a Design patent is a perfect
complement to the Utility, and they are much cheaper and easier to get
awarded. Moreover, recently, their patent protection strength has been
greatly expanded in patent law. And they operate under completely
different infringement law, so where a Utility might fail on technicalities,
the Design patent could win, and vise-versa.