Checklist · Intellectual Property

Design Patent or Utility Patent: A Practical Checklist for Choosing Protection

Type
Checklist
Jurisdiction
National
Date
2025-04-10
Topic
Intellectual Property

A utility patent protects how an invention works under 35 U.S.C. § 101; a design patent protects how an article looks under 35 U.S.C. § 171. The two instruments diverge in term, claim structure, examination, cost, secrecy, the infringement test, and—most dramatically—remedies. This checklist walks an inventor, founder, or counsel through deciding whether to file a utility patent, a design patent, or both, feature by feature. It covers the functionality gatekeeper that decides eligibility, the total-profit damages of § 289 after Samsung v. Apple, the higher obviousness bar after the en banc LKQ decision, the broken-line drawing strategy that sets design scope, the six-month Hague priority trap, and how design patents layer with trade dress and copyright. Confirm current USPTO fees and consult a registered patent practitioner before filing.

Design Patent or Utility Patent: A Practical Checklist for Choosing Protection

Intellectual Property > Patent | Published 10 April 2025 - Updated 13 July 2025 | UpLaw - uplaw.us

Two patents share a name and almost nothing else. A utility patent protects how a thing works; a design patent protects how a thing looks. Choosing the wrong one—or, worse, assuming they behave alike—leaves the real value of an invention exposed. This checklist decides the question feature by feature, then walks the term, cost, examination, infringement, and damages consequences that follow from the choice.

Keywords: design patent, utility patent, 35 U.S.C. § 171, 35 U.S.C. § 101, ornamental design, article of manufacture, ordinary observer test, Egyptian Goddess, Samsung v. Apple, § 289 total profit, LKQ v. GM, Rosen-Durling, functionality, broken-line drawings, Hague Agreement, double patenting, trade dress.

Two products sit on a design studio's bench. The first is a cordless kettle with a heating element that reaches a rolling boil in forty seconds using a new resistive-coil geometry. The second is that same kettle's silhouette—a tapered, asymmetric pour spout and a handle that reads as a single sculpted ribbon of steel. A competitor could copy the first without touching the second, and copy the second without touching the first. Two different copyists, two different lawsuits, two different tests, two different outcomes. That is the whole problem in miniature: the coil is a utility question and the silhouette is a design question, and the U.S. patent system treats them as strangers who happen to share a surname.

Both instruments issue from the same statute (the Patent Act of 1952, Title 35) and the same office (the USPTO), and both let their owner exclude others from making, using, selling, offering to sell, or importing the protected subject matter. See 35 U.S.C. § 271(a). There the resemblance stops. Utility patents "protect new, nonobvious, and useful products, processes, machines, and devices" under 35 U.S.C. § 101; design patents "protect new, original, and ornamental designs of articles of manufacture" under 35 U.S.C. § 171. The general provisions of the Patent Act apply to designs "except as otherwise provided," § 171(b), which turns out to be a large exception once you count term, claim form, drawings, examination emphasis, the infringement test, and remedies.

This checklist is built for the decision, not the abstract comparison. It moves in phases: diagnose where the value lives, confirm each instrument is eligible, weigh the functionality gatekeeper, then run term, cost, claim architecture, examination, infringement, damages, and international deadlines. Each phase has boxes to tick and enough doctrine underneath to explain why the box matters. For a narrative treatment of the head-to-head comparison, pair this with Function or Appearance? Design Patents and Utility Patents Compared; if you are seriously considering both, read Combining Design and Utility Patents: Concurrent Protection and Double-Patenting Pitfalls alongside it.

How to use this checklist

  • [ ] Run the diagnosis feature by feature, not product by product. A single product routinely carries several functional innovations and several ornamental ones, each pointing at a different filing.
  • [ ] Treat the phases as a decision tree with feedback loops: eligibility (Phases 2–3) can eliminate a candidate the value diagnosis (Phase 1) favored, and the damages analysis (Phase 8) can revive a "cheap" design filing you were about to skip.
  • [ ] Document each decision. A written record of why you filed utility, design, or both—and what you consciously left unprotected—is worth its weight when a competitor appears three years later.
  • [ ] Re-run the checklist at each product iteration. New embodiments, redesigns, and feature additions each restart the priority clock and can open or close filing options.

Phase 1 — Diagnose where the value lives

  • [ ] Ask the threshold question for each feature: is the innovation in how it works (a mechanism, process, chemistry, circuit, or method) or in how it looks (a shape, configuration, surface pattern, or on-screen graphic)?
  • [ ] Ask what the customer actually pays for. Function, appearance, or both?
  • [ ] Ask the design-around question. Could a competent competitor engineer around your function only with real R&D, while cloning your look in an afternoon—or vice versa?
  • [ ] Flag features that carry value in both dimensions; these are candidates for layered filings.
  • [ ] Separate "primarily ornamental" appearance from appearance that exists only because the function demands it. The second kind is not protectable by design patent (see Phase 3).

Why the diagnosis controls everything downstream. The two instruments protect opposite attributes, so a wrong diagnosis leaves the actual value unguarded. A utility patent is useless against a rival who copies your look and redesigns the mechanism; a design patent is useless against a rival who copies your mechanism and changes the shape. The most common and expensive mistake among founders is filing only the cheaper design patent on a product whose edge is functional—locking up a silhouette while a competitor sells the same working invention in a different housing. The inverse mistake is rarer but just as costly: a company pours money into utility claims on a consumer product whose real moat is a recognizable, hard-to-imitate appearance, and never files the design patent that would have carried a total-profit remedy.

A running hypothetical. Suppose a boutique appliance maker, Cazador Coffee (hypothetical), develops a pour-over dripper with two genuinely new things: (1) a valved base that meters extraction so the water contacts the grounds for a controlled dwell time, and (2) a faceted, geode-like ceramic body that is unmistakable on a café shelf. Run the diagnosis feature by feature. The valve is how it works—customers who care about extraction pay for it, and a rival would need engineering to replicate the metering. That is a utility candidate. The faceted body is how it looks—it drives shelf recognition and impulse purchases, and a rival could photograph and copy it in a weekend. That is a design candidate. Cazador should not choose between them; it should file both, on different features, for different reasons. We will follow Cazador (and, later, a running shoe and a mobile-app icon) through the rest of the checklist.

The subtle case: appearance that sells because it signals function. Sometimes a shape is prized precisely because it looks fast, looks strong, or looks precise. The Federal Circuit has been clear that consumer appeal of that kind does not convert an ornamental design into a functional one. "The aesthetic appeal of a design to consumers" does not render it functional. Automotive Body Parts Ass'n v. Ford Global Techs., LLC, 930 F.3d 1314, 1319 (Fed. Cir. 2019). So a handle that consumers love because it "looks ergonomic" can still be claimed in a design patent, provided its particular appearance is not dictated by the ergonomics. Phase 3 is where that line gets drawn.

Phase 2 — Confirm each instrument is actually eligible

Deciding you want a design patent or a utility patent is not the same as being able to get one. Before you commit a budget, confirm the subject matter clears the statutory gate for each candidate.

Utility eligibility

  • [ ] Confirm the feature falls into one of the four statutory categories—process, machine, manufacture, or composition of matter (35 U.S.C. § 101)—and is useful, novel (§ 102), and nonobvious (§ 103).
  • [ ] For software, algorithms, and business methods, run the subject-matter-eligibility screen under the Alice/Mayo framework before you invest in a full application. Abstract ideas and laws of nature are not patentable unless the claim adds an inventive concept. See Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
  • [ ] Confirm you can describe and enable the invention in words and claims (§ 112). If you cannot articulate the boundary of what works, you are not ready to draft utility claims.

For the mechanics of utility patentability and prosecution, see Utility Patents Explained: Subject Matter, Requirements, and How One Is Granted and the broader How U.S. Patents Work: A Comprehensive Practical Guide.

Design eligibility

A design patent is available for a design that is (a) embodied in or applied to an article of manufacture, (b) new, (c) original, and (d) ornamental. 35 U.S.C. § 171; MPEP § 1504.01.

For Cazador, the faceted ceramic body is plainly tied to an article (the dripper), it is original (nobody in prior art made a geode-faceted pour-over), and its facets exist for looks rather than flow. All three design boxes tick. The valve, meanwhile, is a machine/manufacture that is useful and—assuming it is new and nonobvious—clears § 101. Both candidates survive Phase 2.

Phase 3 — Weigh the functionality gatekeeper (this decides eligibility and scope)

Functionality is where most design-patent strategy is won or lost, and it operates in two distinct places. Conflating them is a classic error; keeping them separate is the mark of counsel who actually litigates these cases. For a full treatment, see Functionality in Design Patent Law: Untangling Validity from Claim Scope.

The validity question: is the design "dictated by function"?

  • [ ] Ask whether the overall claimed design is dictated solely by the article's function. If it is, the design patent is invalid for lack of ornamentality. This is a high bar—invalidity attaches only when the appearance is essentially compelled by the way the thing works.

  • [ ] Marshal the Automotive Body Parts factors, which the Federal Circuit uses to gauge whether a design is dictated by function:

    • whether there are alternative designs that would perform the same function (the more alternatives exist, the more likely the design is ornamental);
    • whether the design represents the best or only way to achieve the function;
    • whether a utility patent covers the same article or feature;
    • whether advertising touts the utilitarian advantages of the very features in question; and
    • whether there are design elements or an overall appearance clearly not dictated by function.

    See Automotive Body Parts Ass'n v. Ford Global Techs., LLC, 930 F.3d 1314, 1319 (Fed. Cir. 2019); Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320–22 (Fed. Cir. 2016); PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1366 (Fed. Cir. 2006).

  • [ ] Note the practical warning from Automotive Body Parts: touting a design's utility in your own marketing, or holding a utility patent on the same feature, is evidence that the appearance is functional. The word "ergonomic" in a brochure can come back to haunt a design claim.

The claim-scope question: how are functional features treated inside a valid design?

  • [ ] Even in a valid design patent, individual functional features do not get weight in the infringement comparison the way ornamental features do. When construing a design claim, courts "factor out" the purely functional elements so that protection runs to the ornamental aspects. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293–94 (Fed. Cir. 2010) (multi-function carpentry tool; functional configuration of the jaw, hammer-head, and handle factored out). See also Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020) (chalk holder shaped like a pencil; the "pencil" features were functional/utilitarian and could not be the basis for protection).
  • [ ] Understand the consequence: the more of a design that is functional, the narrower its enforceable scope, even if the patent survives. A design that is 90% dictated by function and 10% flourish can be valid but nearly worthless against a competitor who copies the function and changes the flourish.

Worked example: the automotive headlamp. Consider a replacement headlamp for a popular truck (hypothetical, but tracking Automotive Body Parts). The lamp's shape is partly dictated by the fender cavity it must fill and the beam pattern regulations it must satisfy—that is function. But its precise sculpted lens facets, the internal jewel pattern, and the chrome bezel geometry are choices among many that would fit and light the road. A design patent on the overall ornamental appearance is valid because alternatives abound; but a competitor who matches the mandatory mounting contour while using a plainer lens may escape, because the functional envelope is factored out and only the ornamental facets count. This is exactly why the aftermarket-parts fight has been so bitter—and why it feeds into the right-to-repair debate discussed in the library at large.

Cazador check. The valve is all function, so it is never a design candidate. The faceted body has abundant alternatives (a smooth cone, a hexagonal body, a ribbed body would all pour coffee the same way), Cazador does not advertise the facets as improving extraction, and no utility patent covers the facets. The facets are ornamental. Design box confirmed.

Phase 4 — Weigh term, cost, speed, and secrecy

The economics diverge as sharply as the doctrine, and the differences often decide close cases.

  • [ ] Term. A utility patent runs 20 years from its earliest effective U.S. filing date, 35 U.S.C. § 154(a)(2), subject to maintenance fees at roughly 3.5, 7.5, and 11.5 years, § 41(b). A design patent runs 15 years from grant for applications filed on or after May 13, 2015 (14 years for earlier ones), 35 U.S.C. § 173, with no maintenance fees, 37 C.F.R. § 1.362(b).
  • [ ] The measuring-point twist. Because the design term runs from issuance, prosecution delay does not erode it, and patent term adjustment (PTA) is unavailable for design patents. MPEP § 2710. A slow examination costs a utility patent enforceable life (subject to PTA) but costs a design patent nothing in term.
  • [ ] Cost. Utility patents commonly run five figures—often ~$10,000–$30,000+ through issuance, more for complex or heavily prosecuted technologies. Design patents commonly run ~$2,000–$4,000 each. (Figures are ballpark; verify current USPTO fees, which the office adjusts periodically.)
  • [ ] Speed. Design prosecution typically takes about 18–21 months, and the office allows a large majority of design applications—about 72% in recent USPTO data, versus roughly 59% for utility. Faster grant means enforceable rights sooner.
  • [ ] Secrecy before grant. Design applications are not published before issuance. 35 U.S.C. § 122(b)(2)(A)(iv); 37 C.F.R. § 1.362(b). A design filing stays confidential until the patent grants, which delays the day a competitor learns the design exists. Utility applications generally publish at 18 months unless a nonpublication request is filed (available only if no foreign filing is planned).

Strategic read. For a consumer product with a short fashion cycle, the design patent's combination of low cost, fast grant, no maintenance fees, and pre-grant secrecy is potent. For a core technology meant to anchor a company for two decades, the utility patent's longer term and functional scope justify its cost. The two are not substitutes competing for one budget line; they are complementary layers, and the "which can I afford?" framing is usually the wrong one—see the damages analysis in Phase 8 before deciding a design patent is a luxury.

Phase 5 — Plan claims and drawings (the architectures could not be more different)

Utility: words are the claim

Design: the drawings ARE the claim

  • [ ] Recognize that a design patent has one claim, in a fixed form: "The ornamental design for [the article] as shown [and described]." 37 C.F.R. § 1.153(a). The scope of that claim is defined entirely by the drawings, not by prose. Richardson, 597 F.3d at 1293–94 (claim construction is based on what the drawings show).
  • [ ] Deploy broken (dashed) lines to disclaim environment and unclaimed portions, and solid lines for the claimed design. 37 C.F.R. § 1.152; MPEP § 1503.02(III). Converting a feature from solid to broken lines broadens the design's reach, because it removes that feature from what the accused product must match. This is the single most consequential drafting lever in design practice.
  • [ ] Consider partial (fragmentary) claiming: claim only the portion of the article that carries the distinctive look, showing the rest in broken lines. A design directed to "a portion" of an article—say, just the pour-spout lip of Cazador's dripper—reads on any dripper bearing that lip, regardless of the rest of the body.
  • [ ] Provide enough views (front, back, top, bottom, both sides, and perspective) to show the entire claimed design; ambiguity about a surface can invalidate the patent for indefiniteness. MPEP § 1503.02. The enablement/definiteness analysis for a design turns on whether an ordinary designer would understand the claimed design from the drawings. In re Maatita, 900 F.3d 1369, 1375–76 (Fed. Cir. 2018).
  • [ ] Decide whether to file multiple embodiments in one application. A single application may claim several embodiments only if they share a single inventive concept; if the examiner finds patentably distinct designs, expect a restriction requirement forcing you to elect one and file divisionals for the rest. MPEP § 1504.05. A product with several distinct ornamental aspects usually needs several design patents.
  • [ ] Note two priority traps for designs: a design application cannot claim benefit of a provisional application, 35 U.S.C. § 119(e); 37 C.F.R. § 1.53(c)(4)—so there is no cheap one-year placeholder for a design; and to lock a design priority date you must file the real application. A design can, however, claim domestic benefit of an earlier utility application if that utility disclosure supports the claimed design. 35 U.S.C. § 120; MPEP § 1504.20.

The broken-line superpower, illustrated. Suppose Cazador draws its entire faceted body in solid lines. The claim now covers the whole body, and a competitor who copies the facets but changes the handle may argue the overall designs differ. If instead Cazador claims only the faceted upper cone in solid lines and shows the base and handle in broken lines, the claim reaches any dripper with that faceted cone. One drawing decision, made for the price of a redraw, can multiply the enforceable footprint of a $3,000 patent. A well-advised company files a small portfolio of design patents on one product—the whole article, the front, the key surface, and one or two components—each an affordable, separate layer with its own broken-line strategy.

Phase 6 — Anticipate examination and the higher design-obviousness bar after LKQ

How the post-LKQ analysis actually runs. The design-obviousness inquiry still proceeds from a primary reference, but LKQ loosened the "basically the same" straitjacket: the primary reference need only be "something in existence" whose design characteristics are visually similar to the claimed design, viewed through the eyes of "a designer of ordinary skill who designs articles of the type involved." Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d 1379, 1383 (Fed. Cir. 2020); High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313 (Fed. Cir. 2013). Secondary references may then be combined where a designer would have been motivated to do so, and analogous-art principles apply—surface ornamentation from an unrelated article can qualify if the appearances are close enough. In re Glavas, 230 F.2d 447, 450 (C.C.P.A. 1956); MPEP § 1504.03. For the utility-side framework that now governs design cases too, see Obviousness Under Section 103: A Comprehensive Guide to the Analysis and the tactical Defeating a Section 103 Obviousness Rejection: A Practical Checklist. For the design-specific fallout, see After LKQ v. GM: Design Patent Obviousness Under the Graham Framework.

Phase 7 — Compare the infringement tests (two unrelated inquiries)

This is where the "different surname" metaphor becomes concrete. The tests share no vocabulary and often reach opposite results on the same accused product.

Utility infringement: the all-elements rule

Design infringement: the ordinary observer test

Worked example: the running shoe. Imagine an athletic brand, Meridian (hypothetical), holds a utility patent on a lattice midsole geometry that returns energy, and a design patent on the visible tread pattern and lateral silhouette of the shoe. Competitor A sells a shoe with an identical-looking tread and silhouette but a conventional foam midsole. Competitor B sells a boxy, ugly shoe that nonetheless copies the exact lattice geometry inside. A infringes the design patent (ordinary observer sees the same shoe) but not the utility patent (no lattice). B infringes the utility patent (every limitation present) but not the design patent (no ordinary observer confuses the two silhouettes). Same brand, two patents, two copyists, two opposite outcomes. That is precisely why Meridian holds both, and it is the reason "pick the cheaper one" is malpractice-adjacent advice for a serious product. For how these two tests play out in litigation, see Litigating Design Patents: From Claim Construction to Total-Profit Damages and, for utility, Litigating Patent Infringement: A Roadmap and Research Guide.

Phase 8 — Compare the damages stakes (the design "superpower")

If Phase 7 shows why you may need both patents, Phase 8 shows why the design patent is routinely the more dangerous weapon per dollar spent.

Utility damages: apportioned to the patented feature

Design damages: the infringer's total profit

Why this reframes the "cheap patent" instinct. A design patent that cost $3,000 can support a nine-figure total-profit award, because § 289 hands the owner the infringer's whole profit on the article. That asymmetry—trivial cost, potentially enormous remedy—is why sophisticated consumer-product companies file portfolios of design patents around a single product and treat them as front-line enforcement tools, not decoration. The Samsung article-of-manufacture question can shrink the base from the finished phone to a screen or a bezel, but even the shrunken base is often larger than an apportioned utility royalty. The Apple v. Samsung saga is the canonical illustration; for the strategic lessons, see Landmark Patent Wars: Strategic Lessons From High-Profile Case Studies.

Meridian, continued. If Competitor A copied Meridian's shoe silhouette, Meridian can seek A's total profit on every infringing shoe under § 289—no need to prove how much of the purchase decision the look drove. If B copied only the hidden lattice, Meridian is left with an apportioned utility royalty on the midsole. The visible-design copyist is often the more expensive defendant, which is counterintuitive until you internalize § 289.

Phase 9 — Plan international filings (mind the six-month design trap)

  • [ ] Utility route. Use the Patent Cooperation Treaty (PCT) and the 12-month Paris Convention priority window. The PCT lets an applicant defer national-stage country selection up to 30 months from the priority date.
  • [ ] Design route. Use the Hague Agreement (Geneva Act, effective in the U.S. May 13, 2015) to file a single international design application (IDA) designating multiple jurisdictions, and observe the six-month priority window that governs designs—35 U.S.C. § 172; 37 C.F.R. § 1.55(b)—not the 12-month utility window.
  • [ ] Do not assume the utility deadline applies. This is the most common and unforgiving international mistake in design practice: an inventor who publicly discloses or files in the U.S. and waits eleven months to file abroad, relying on the familiar 12-month clock, forfeits foreign priority for the design, which expired at six months. Calendar the six-month date the moment a design is filed or disclosed.
  • [ ] Know the Hague quirks. Unlike the PCT, the Hague system requires the applicant to designate target jurisdictions at filing. Major markets—including China, Canada, and Israel—are not part of the system reachable by U.S. applicants in the usual case, so parallel national filings may still be necessary. And an IDA is published by WIPO about six to twelve months after registration, which sacrifices the pre-grant secrecy a purely domestic U.S. design filing enjoys. The USPTO retains 12 months (rather than the usual 6) to refuse a U.S.-designated IDA. 37 C.F.R. § 1.1062(b).
  • [ ] Consider a Registered Community Design at the EUIPO for cost-effective, EU-wide coverage of the design, and weigh unregistered Community design rights for short-lived products.
  • [ ] For coordinating multi-jurisdiction enforcement once patents issue, see Cross-Border Patent Litigation: Strategies for Navigating International IP Disputes.

Phase 10 — Coordinate with trade dress, copyright, and trade secret

Patents are not the only tools for protecting look and function, and the smartest strategies layer several regimes so that protection persists after any one of them lapses. For the four-regime overview, see Copyright, Trademark, Patent, and Trade Secret Compared: A Practical Guide and The Three Pillars of IP: How Copyright, Trademark, and Patent Differ.

Design patent plus trade dress

Design patent plus copyright

  • [ ] Consider copyright for surface graphics, icons, and separable ornamental art. A pictorial, graphic, or sculptural feature of a useful article is copyrightable if it "can be perceived as a two- or three-dimensional work of art separate from the useful article" and would qualify as protectable art on its own. Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405, 417 (2017); 17 U.S.C. §§ 101–102.
  • [ ] Note that the two regimes can overlap: even a feature that fails copyright's separability test may still be protectable by design patent, and vice versa. Copyright arises automatically on fixation and lasts far longer (life-plus-70), but is defeated by independent creation and limited by fair use—defenses that do not exist against a design patent, where copying and access are irrelevant to infringement.

Software: layering across all four regimes

Phase 11 — If you file both, manage double patenting and portfolio coherence

Pursuing utility and design protection on the same product is the sophisticated default, but it introduces its own doctrinal housekeeping.

  • [ ] Screen for obviousness-type double patenting when a design and a utility patent claim overlapping subject matter, or when multiple design filings claim variations that are not patentably distinct. A terminal disclaimer is the usual cure, and the Patent Act's § 121 safe harbor can protect claims carved out by an examiner's restriction requirement.
  • [ ] Coordinate the timing and disclosure across the two applications so that one filing's public record does not become prior art against the other, and so that a design's benefit claim to an earlier utility filing (35 U.S.C. § 120) is properly supported.
  • [ ] Map the portfolio deliberately: which utility claims cover the mechanism, which design patents cover the whole article, the key surfaces, and the components, and where trade dress and copyright will eventually backstop the appearance. The mechanics of concurrent protection—including the functionality divide, terminal disclaimers, and the differing infringement and damages rules—are worked through in Combining Design and Utility Patents: Concurrent Protection and Double-Patenting Pitfalls.
  • [ ] Fold the whole plan into your pre-launch clearance and freedom-to-operate work, so you are not only building rights but also confirming you can practice the design without infringing others'. See Clearing a Product for Launch: How to Conduct a Freedom-to-Operate Analysis and The IP Clearance Toolkit: Securing Freedom to Operate Before You Launch.

The full worked example: Cazador's pour-over, from bench to portfolio

Bringing the running hypothetical together shows how the phases compound into a coherent filing plan.

Diagnosis (Phase 1). Cazador has two innovations: a dwell-metering valve (function) and a faceted geode body (appearance). Two candidates, two tracks.

Eligibility and functionality (Phases 2–3). The valve is a machine that is useful, and—assuming novelty and nonobviousness—clears § 101 as a utility candidate. The body is tied to an article, original, and ornamental, with abundant alternative shapes and no advertising of the facets as functional; it clears § 171 and survives the Automotive Body Parts functionality screen.

Economics (Phase 4). Cazador files the utility application on the valve (~$15,000, 20-year term from filing, publishes at 18 months) and three design applications (~$3,000 each): one on the whole body, one on just the faceted upper cone (broken-lining the base and handle), and one on the distinctive spout lip. The design filings stay secret until grant and carry no maintenance fees.

Drawings and claims (Phase 5). The utility claims are layered (broad independent claim to the metering mechanism, narrower dependents to the specific valve geometry). The design drawings use broken lines to broaden the cone and spout claims, and Cazador anticipates a restriction requirement if it tries to cram all three designs into one application—so it files three from the start.

Examination (Phase 6). The valve draws § 102/§ 103 rejections that Cazador overcomes with narrowing amendments. The design applications draw post-LKQ obviousness rejections combining a faceted vase reference with a plain dripper reference; Cazador rebuts with evidence that a designer of ordinary skill would not have combined them and points to early commercial success.

Enforcement math (Phases 7–8). A year after launch, Rival X sells a dripper with Cazador's exact faceted cone but a smooth-flow base (no valve). Rival Y sells an ugly cylindrical dripper containing a knockoff of the metering valve. X infringes the design patents (ordinary observer sees the same cone) and exposes itself to § 289 total profit on every unit sold. Y infringes the utility patent and faces an apportioned reasonable royalty on the valve. Cazador's "cheap" design portfolio turns out to carry the larger remedy.

International and layering (Phases 9–11). Cazador calendars the six-month Hague deadline for the designs (not the 12-month utility clock), files an IDA designating the EU and Japan, files a PCT for the valve, and begins building trade-dress recognition in the faceted body so that when the design patents expire in fifteen years, the look is still protected. It screens the design and utility filings for double patenting and files terminal disclaimers where needed.

Quick-reference: how the two instruments diverge

Attribute Utility patent (§ 101) Design patent (§ 171)
Protects How it works (function) How it looks (ornamental appearance)
Statute 35 U.S.C. § 101 35 U.S.C. § 171
Term 20 years from earliest filing (§ 154) 15 years from grant (§ 173); no PTA
Maintenance fees Yes (~3.5/7.5/11.5 yrs, § 41(b)) None (37 C.F.R. § 1.362(b))
Typical cost ~$10,000–$30,000+ ~$2,000–$4,000 each
Claim form Multiple written claims (§ 112) One claim; the drawings are the claim (§ 1.153(a))
Pre-grant publication Generally at 18 months None until issuance (§ 122(b)(2)(A)(iv))
Provisional available Yes (§ 111(b)) No (§ 119(e); § 1.53(c)(4))
Infringement test All-elements rule after Markman Ordinary observer (Gorham/Egyptian Goddess)
Doctrine of equivalents Available Subsumed by ordinary-observer test
Obviousness Graham/KSR Graham/KSR after LKQ (2024)
Core damages Reasonable royalty/lost profits, apportioned (§ 284) Infringer's total profit, no apportionment (§ 289)
Enhanced damages Up to treble for willfulness (§ 284; Halo) Not on top of § 289 (Braun)
International route PCT; 12-month priority Hague; 6-month priority (§ 172)

(Fee figures are approximate; confirm current USPTO fees before budgeting.)

Common mistakes to avoid

  • Assuming the two patents behave alike. They differ in term, claim form, examination, infringement test, and remedies. Treat them as separate instruments that happen to share a statute.
  • Filing only the cheaper design patent on a functionally driven product—locking up a silhouette while a competitor sells the same mechanism in a new housing.
  • Claiming a functional feature in a design patent. Only ornamental features are protected; a design dictated by function is invalid, and functional features are factored out of an otherwise-valid claim's scope. Automotive Body Parts, 930 F.3d at 1319; Richardson, 597 F.3d at 1293–94.
  • Wasting design scope by drawing in solid lines what should be broken. Every solid line is a limitation the accused product can avoid.
  • Cramming multiple distinct designs into one application and drawing a restriction requirement, then losing priority on the elected-out designs.
  • Relying on a provisional to hold a design priority date—there is no provisional for designs.
  • Missing the six-month design priority window by trusting the familiar 12-month utility clock, and forfeiting all foreign design rights.
  • Underestimating post-LKQ obviousness, both as an applicant (more rejections) and as a patent owner (easier invalidation).
  • Letting marketing copy sink your own rights by advertising the utilitarian benefits of features you claim as ornamental design or trade dress.
  • Forgetting the total-profit remedy. A $3,000 design patent can carry a nine-figure § 289 exposure; do not dismiss it as decorative.

Primary authority

Statutes. 35 U.S.C. §§ 101, 102, 103, 111, 112, 119, 120, 122, 154, 161, 171, 172, 173, 271, 283, 284, 285, 287, 289, 386; 17 U.S.C. §§ 101–102.

Regulations and MPEP. 37 C.F.R. §§ 1.53(c)(4), 1.55(b), 1.152, 1.153(a), 1.362(b), 1.1062(b); MPEP §§ 1502, 1503, 1503.02, 1504, 1504.01, 1504.03, 1504.05, 1504.20, 2710.

Cases. Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc); Samsung Electronics Co. v. Apple Inc., 580 U.S. 53 (2016); Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983 (Fed. Cir. 2015); LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) (en banc); Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007); Graham v. John Deere Co., 383 U.S. 1 (1966); Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996); Automotive Body Parts Ass'n v. Ford Global Techs., LLC, 930 F.3d 1314 (Fed. Cir. 2019); Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. Cir. 2016); PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015); In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964); Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010); Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020); Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019); In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021); In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018); International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009); Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 80 F.4th 1363 (Fed. Cir. 2023); High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013); Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d 1379 (Fed. Cir. 2020); In re Glavas, 230 F.2d 447 (C.C.P.A. 1956); Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014); Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277 (Fed. Cir. 2002); Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998); Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815 (Fed. Cir. 1992); eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006); Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93 (2016); Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995); Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000); Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014); Knickerbocker Plastic Co. v. Allied Molding Corp., 184 F.2d 652 (2d Cir. 1950).

Secondary and agency sources. USPTO, Manual of Patent Examining Procedure (MPEP), ch. 1500 (design patents); USPTO, A Guide to Filing a Design Patent Application; Donald S. Chisum, Chisum on Patents (design patents and § 289); 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (trade dress functionality).

This checklist is general legal information published by UpLaw (uplaw.us), not legal advice. USPTO fees, allowance rates, and examination guidance change; confirm current figures and consult a registered patent practitioner before filing.

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