Article · Intellectual Property

Combining Design and Utility Patents: Concurrent Protection and Double-Patenting Pitfalls

Type
Article
Jurisdiction
National
Date
2026-01-25
Topic
Intellectual Property

A single product can carry both a utility patent, which protects how it works, and a design patent, which protects how it looks, and pursuing both is often the shrewdest protection strategy a company can adopt. This article maps the two statutory regimes and the exact circumstances in which concurrent protection is available, then explains the functionality bar that separates a protectable ornamental design from an unprotectable functional one. It works through obviousness-type double patenting as it operates across patent types, including the Carman Industries cross-reading standard, the patentee-favorable two-way test, the Section 121 divisional safe harbor, the common-ownership requirement, and the mechanics and hidden costs of terminal disclaimers. It contrasts the very different infringement tests and damages rules of each regime, including the Section 289 total-profit remedy after Samsung v. Apple and the overhaul of design-patent obviousness in LKQ v. GM. A fully worked hypothetical ties the doctrines together, and a practitioner FAQ closes the piece.

Combining Design and Utility Patents: Concurrent Protection and Double-Patenting Pitfalls

Intellectual Property > Patent | Published 25 January 2026 - Updated 6 April 2026 | UpLaw - uplaw.us

A utility patent and a design patent can protect the same physical object at the same time, because they guard against two different kinds of copying: the functional clone and the visual knockoff. The trick is knowing when the two patents are genuinely distinct and when they collapse into a single invention that no company is entitled to patent twice.

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