1502.01 Distinction Between Design and Utility Patents [R-07.2022]

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

Some of the more common differences between design and utility patents are summarized below:

• (A) The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application under 35 U.S.C. 120, 121, 365(c), or 386(c), 20 years from the date on which the earliest such application was filed, while the term of a design patent is 15 years measured from the date of grant, if the design application was filed on or after May 13, 2015 (or 14 years if filed before May 13, 2015). (See 35 U.S.C. 173 as amended under section 102 of the Patent Law Treaties Implementation Act, 126 Stat. at 1531-32).
• (B) Maintenance fees are required for utility patents (see 37 CFR 1.20), while no maintenance fees are required for design patents.
• (C) Design patent applications include only a single claim, while utility patent applications can have multiple claims.
• (D) Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications (see MPEP § 803), while it is mandatory in design patent applications (see MPEP § 1504.05).
• (E) An international application designating various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT), whereas an international design application designating various countries may be filed for design protection under the Hague Agreement.
• See MPEP Chapter 2900 for international design applications.
• (F) Foreign priority under 35 U.S.C. 119(a)-(d) can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications (see 35 U.S.C. 172).
• (G) Utility patent applications may claim the benefit of a provisional application under 35 U.S.C. 119(e) whereas design patent applications may not. See 35 U.S.C. 172 and 37 CFR 1.78(a)(4) .
• (H) A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)).
• (I) Continued prosecution application (CPA) practice under 37 CFR 1.53(d) is only available for design applications filed under 35 U.S.C. chapter 16 (see 37 CFR 1.53(d)(1)).
• (J) Utility patent applications filed on or after November 29, 2000 are subject to application publication under 35 U.S.C. 122(b)(1)(A), whereas design applications filed under 35 U.S.C. chapter 16 are not subject to application publication (see 35 U.S.C. 122(b)(2)).

Other distinctions between design and utility patent practice are detailed in this chapter and MPEP Chapter 2900 for international design applications. Unless otherwise provided, the rules for applications for utility patents are equally applicable to applications for design patents (35 U.S.C. 171 and 37 CFR 1.151 and 1.1061).

1502.02 Design Patent Practitioner Bar [R-01.2024]

Effective January 2, 2024, the USPTO created a separate design patent practitioner bar whereby admitted design patent practitioners would practice in design patent proceedings only. See Representation of Others in Design Patent Matters Before the United States Patent and Trademark Office, 88 FR 78644 (November 16, 2023). Expanding the admission criteria of the patent bar encourages broader participation and keeps up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.

Design patent practitioners (attorneys and agents) have to pass the same registration exam and moral character evaluation as required for all patent practitioners, which ensures they have the requisite knowledge of Office rules, policies, and procedures. However, the scientific and technical requirements for admission as a design patent practitioner have been modified. Specifically, applicants to the design patent practitioner bar should have a bachelor’s, master’s, or doctorate of philosophy degree in any of the following areas from an accredited college or university: industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education, or a degree equivalent to one of these listed degrees. See the Office of Enrollment and Discipline webpage at www.uspto.gov/about-us/organizational-offices/ office-general-counsel/office-enrollment-and- discipline-oed for more information. Design patent practitioners, like all patent practitioners, are required to provide competent representation to their clients. This includes properly informing their clients of practice limitations. See 37 CFR 11.101.

Design patent practitioners are registered under 37 CFR 11.6(d) and can only practice in design patent matters. 37 CFR 1.32(a)(1). Therefore, a design patent practitioner cannot sign papers in a utility (including provisional) or plant application. A patent practitioner who is registered to practice in all patent matters under 37 CFR 11.6(a)-(c) can sign papers in a design application. In other words, all patent practitioners can practice in design patent matters, but only patent practitioners that can practice in all patent matters can practice in utility, plant, and design patent matters. A power of attorney naming the practitioners associated with a customer number filed in an application may only include practitioners who are authorized to practice in that application. If a design patent practitioner is associated with a customer number, that customer number cannot be used to establish power of attorney in a utility or plant application. This applies even if a practitioner that is authorized to practice before the Office in all patent matters is also associated with that same customer number. See MPEP §§ 402, subsection II and 403, subsection I. A listing of registered patent attorneys and agents (including design patent attorneys and agents) is available at www.uspto.gov/FindPatentAttorney. Interested parties may also obtain a list of registered patent practitioners located in their area by writing to the Office of Enrollment and Discipline (OED) at Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. The Office cannot aid in selecting a patent practitioner. See 37 CFR 1.31 and MPEP § 401.

In addition to the signature requirements for patent practitioners registered under 37 CFR 11.6(a)-(c), design patent practitioners must indicate their design patent practitioner status in order to avoid public confusion and make the record clear. For handwritten signatures, a design patent practitioner must place the word “design” (in any format) adjacent to their signature (37 CFR 1.4(d)(1)), and for S-signatures, a design patent practitioner must place the word “design” (in any format) adjacent to the last forward slash of their S-signature (37 CFR 1.4(d)(2)(ii)).