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

39 questions on combining design and utility patents, answered and cited by the UpLaw editorial team.

• Can a design patent be cited as prior art against a utility application, or vice versa?
• Can a design patent be used as a double-patenting reference against a utility patent?
• Can you get both a design patent and a utility patent on the same product?
• How do alternative designs and the PHG factors bear on functionality?
• How do courts identify the relevant “article of manufacture” after Samsung?
• How does a design patent layer with trade dress and copyright?
• How do GUIs, 3D printing, and AI-generated designs stress the design-utility boundary?
• How is design patent infringement determined?
• How is utility patent infringement determined?
• How long does a design patent last compared with a utility patent?
• How should a company sequence its design and utility filings on the same product?
• How should a dual design-and-utility portfolio be licensed?
• Is a design “functional” because consumers find it attractive?
• Is a design unprotectable just because it serves a function?
• What cases have found impermissible design-utility double patenting?
• What cautions govern the design-utility double-patenting comparison?
• What damages are available for design and utility patent infringement?
• What deadlines differ between design and utility patent applications?
• What did Egyptian Goddess v. Swisa change about design patent infringement?
• What did LKQ v. GM change about design patent obviousness?
• What did Samsung v. Apple decide about the “article of manufacture” under § 289?
• What does a design patent claim actually look like?
• What does a terminal disclaimer cost in the design-utility setting?
• What is a terminal disclaimer and how does it work?
• What is double patenting, and why does it exist?
• What is the concomitant-utility-patent trap?
• What is the difference between a utility patent and a design patent?
• What is the difference between statutory double patenting and obviousness-type double patenting?
• What is the functionality bar in design patent law?
• What is the identity-of-features or “cross-reading” test for design-utility double patenting?
• What is the Section 121 divisional safe harbor?
• What is the total-profit remedy under 35 U.S.C. § 289?
• What is the two-way ODP test, and why does it favor patentees in design-utility cases?
• What kinds of products naturally support both a design patent and a utility patent?
• When is a terminal disclaimer unavailable to cure double patenting?
• When is concurrent design and utility protection the clearest case — and when is it the hardest?
• Why does LKQ matter to a company pursuing both design and utility patents?
• Why is it worth holding both patents when a competitor copies your product?
• Why must a design patent be tied to a specific article of manufacture?