I have an invention that is an improvement to an existing product. I have reconfigured the basic components and made small additions. These additions and their design are unique, changing the look and functional values of the “prior art”
On the surface, it appears it may be beneficial to file for both a utility patent application and a design patent application in this matter.
However, a patent search may reveal further prior art.
Generally, it may, arguably, be easier to get a design patent application to issue, rather than a utility patent application.
You should discuss with an intellectual property attorney in a private consultation.
Legal Disclaimer- the information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship. Although effort has been made to ensure that the answers are correct, Law Office of Walter Tencza Jr. cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only. Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.
Whether you should apply for a utility patent, design patent, or both depends on whether your modifications include novel and nonobvious structures and functions, as well as whether your modifications include novel and nonobvious aesthetic elements. These questions can only be answered on a case by case basis, with an evaluation of both your invention and the prior art.
The prudent course is not to publicly disclose your invention before you file an application for patent that adequately describes your invention. Utility patents are the most common type of patent and are provided for a new, non-obvious and useful:
• Article of manufacture
• Composition of matter
● Improvement of any of the above.
You should be aware that, even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences, a patent may still be refused if a person having ordinary skill in the area of technology related to the invention would find it obvious to make the change(s).
An inventor is free to prepare his or her own utility patent application (or design patent application). You should be aware that the preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and USPTO practice and procedures. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.
Before you decide to file a utility patent application and/or a design patent application, you should discuss your invention with a registered patent attorney.
The answer to your question depends on the novelty of your invention and design. It also depends on business considerations, including your budget.
I suggest that you retain an experienced Registered Patent Attorney to conduct a search and provide you an opinion on the novelty of your invention and design. You can then make an educated decision to file on one or both. One way of economizing is to file your utility application first, with drawings that are sufficient to disclose the design, and before the utility application issues, file a Design application claiming priority of your utility application's filing date.
While the cost may be the same, you can spread out the expense over several years.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
Short Answer: Yes. Assuming that your invention is eligible, you can get it protected under either or even both categories. A utility patent covers how a product or process is used, made, its structure, operation or function. A design patent covers ornamental, aesthetic aspects of products or software that have utility. Your next step should be to consult with a patent attorney who can evaluate and analyze the particulars of your case and advise you accordingly. Good Luck.
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