IP Essentials: Q&A Series

Q Can a design patent application claim priority to a pending utility patent application? A Yes, depending on the drawings that were filed in a pending utility patent application, a design patent application can be filed based on those drawings and claim priority to the pending utility patent application. Such a design patent application would be entitled to the benefit of the filing date of the utility patent application. Any subsequently issued design patent would still have a term of fifteen years from its issue date. Design patents cannot claim priority to a provisional utility patent application. Q How does a design patent differ from a utility patent? A Generally, a design patent protects the ornamental appearance of a product. In a patent portfolio, design patents can be used to complement utility patents, which generally protect the structure, function, method of manufacture, or use of the product. Design patents generally issue sooner than utility patents, taking an average of about fifteen months from filing to issue.

Q Can an ornamental design be protected simultaneously by design patent, trade dress, and copyright? A Generally, yes, though each route has its own requirements and might be suitable for different aspects of a given ornamental design. Design patents may serve as precursors towards trade dress rights where the ornamental design is non-functional. Q If someone infringes my design patent, what damages are available? A In addition to conventional remedies such as obtaining injunctive relief, and as an alternative to collecting a reasonable royalty, a design patent owner may collect the total profits of the sales by the infringer. However, depending on the scope of the design patent, the damages may be limited to a component of a product rather than the entire product.

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