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What Is A Design Application, And How Does It Differ From A Utility Patent Application?

A utility application is an application that seeks to patent and protect the structural features and/or functional features of an invention. A design application, on the other hand, is an application that seeks to patent and protect an ornamental feature of an invention.

Design patents cover the ornamental nonfunctional design of an item. Design patents can be invalidated if the design has practical utility (e.g. the shape of a gear). Design patents are valid for 14 years from the date of issue. There are no maintenance fees.

The Federal Circuit then noted that it has been well established for over a century that the same test must be used for both infringement and anticipation. Thus, to prevent inconsistency from developing between infringement and anticipation analyses, the Federal Circuit held that the ordinary observer test should be the sole test for determining whether a design patent has been anticipated.

The original observer test originated in 1871 in Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871) when the Supreme Court held “that if, in the eye of an ordinary observer giving such attention as a purchase usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

The ordinary observer test was refined in Egyptian Goddess by characterizing the ordinary observer to pay attention to the aspects of the claimed design that differ from the prior art and to give importance to the small differences between the accused design and the claimed designed when the claimed design is close to the prior art designs.

Whether you should file a utility or design application depends on the kind of invention you have, your goals, and the kind of protection you seek. Not all inventions can be a subject of a design application. It is best that you consult with a registered patent attorney to determine which application to file.

If you have any questions regarding this article, please contact Roland Tong at 949-298-6867 or [email protected]. Mr. Tong is a Registered Patent Attorney and has prepared and filed numerous patent applications for clients with inventions in the fields of gaming, electrical, mechanical, computer hardware and software, optics, medical devices, and biomedical technologies. He is admitted to practice in the United States Patent and Trademark Office and all state courts of California and Nevada.