Patent Attorney – "Pat. Pend."

Category: Denver Patent Attorney

  • What type of patent application is best?

    What type of patent application (design patent application, provisional patent application, or regular utility patent application) is the best?

    A design and utility patent application each protect different aspects of an invention. A utility patent protects the function of an invention. A design patent protects the ornamental appearance of an invention. If an invention only has a unique function (no ornamental appearance), then the inventor can file a utility patent application (or provisional patent application). If an invention only has a unique ornamental appearance, then the inventor can file a design patent application.

    But some inventions have both, and can be protected by a design patent and/or a utility patent. That is, there is a legal basis to file both types of patent applications. So which one should an inventor file? There are pros and cons to both. For example:

    • A design patent is fairly limited, in that it only protects the specific design shown in the drawings (and perhaps minor variations). A design patent often issues faster and costs less.
    • A utility patent is generally considered broader, because it protects various functions regardless of how it looks. But a utility patent application may take longer to issue as an enforceable patent, and costs more.

    If budget is not a consideration, for maximum protection an inventor can file both a design patent application and a utility patent application. Often though, budget is a major consideration. With a limited budget, the inventor has to make the decision what is more important to protect (utility or design) and then pursue the appropriate route (provisional, utility, or design). This is called a “business decision.”

    Whether to file a design patent application, a utility patent application, or both, is a business decision the inventor makes based on these and other factors. A patent attorney can answer questions about any of these options, and help the inventor make a decision that is appropriate on a case-by-case basis.

  • How many design patent applications is appropriate?

    A design patent application is limited to a single design. An inventor can file separate design patent applications for each unique design. But it is easy to see how this can quickly get out of control. To reduce costs, one approach is to file design patent applications for the actual design being marketed.

    While minor variations may be considered additional embodiments of the same design, the Patent Office Examiners are typically fairly strict and will make the applicant select a single design for examination. Thus, while a single design patent application may include more than one embodiment of the same design, the Examiner may require the applicant to re-file these as separate design patent applications (and pay the separate fees for each).

    But filing multiple design patent applications for minor variations of the same invention can also get the applicant into trouble. For example, this may be used as an admission by the applicant that the inventor considers such a minor changes to be distinct. A potential infringer could use this against the applicant later, countering any claim for infringement that any minor differences in their design also are distinct (and thus they are not infringing the design patent).

    These are just some of reasons why it may be a good approach (when possible) to file both a design patent application for a specific design being marketed (regardless of how it functions), and a utility patent application for the utility of the invention (regardless of how it looks). Of course, how many and what type of patent applications to file is a business decision that should be based on input from a patent attorney who understands your invention and your goals for taking the product to market.

  • Patent Attorney Mark Trenner on KHOW

    Patent Attorney Mark Trenner on KHOW AM 630

    Mark Trenner is on KHOW again next week:

    Wednesday, November 7th from 10:00 to 12:00

    On AM 630 in Denver, Colorado.