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I have an Invention ... Now What?
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   Utility AND Design patents on the same item??
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   Author  Topic: Utility AND Design patents on the same item??  (Read 1185 times)
WarrenDekker
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Utility AND Design patents on the same item??
« on: Mar 12th, 2005, 8:57am »
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This is unrelated to the question I have posted under Trademarks.
 
Again, a fictious analogy.
 
Man A invents a new ukulele neck, that is stronger, lighter, and much cheaper to manufacture than prior ukulele necks.  He definitely wants to obtain a utility patent, and dreams of retiring in Hawaii, lying under a palm tree, while being serenaded by women playing ukuleles of his design.  
 
His ukulele neck design is also visibly unique....visibly quite different than all prior ukulele necks.  It would be practically impossible to make a ukulele neck that looks like his ukulele neck, without also violating the core of his invention, as would be explained in a utility patent application.
 
Given the uncertainty of obtaining a utility patent, is the man well advised to file for both a utility patent and a design patent...in case the utility patent somehow is not granted?  If the man wishes to file both, is it wiser to file the utility patent first, or the design patent first, or both at the same time?
 
If the man is poor, and cannot afford a patent lawyer, is he well advised to try to obtain the simpler design patent, or to try to get the utility patent on his own?
 
Thanks,
 
Warren Dekker
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JimIvey
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Re: Utility AND Design patents on the same item??
« Reply #1 on: Mar 12th, 2005, 10:32am »
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First, an item or product (or service) can be covered by many forms of intellectual property (and even many patents).  A patent covers a single innovation, and a given item may have several innovations.
 
As for design and utility patents peacefully coexisting, they cannot cover exactly the same innovation but can cover different aspects of the same thing.  In particular, utility patents necessarily cover things that are useful while design patents cover ornamental designs (purely aesthetics).  Functionality is a prerequisite for utility patent and is fatal to a design patent.  
 
Having said that, I've seen design patents on tire treads and I suspect the sales force for that company would represent the tread as functional while the IP department simultaneously argues the tread is merely decorative.
 
I would suggest that filing a utility patent on something arguably aesthetic (e.g., tire tread, airfoil, shape of a ukelele neck, etc.) would preclude a design patent on the same thing.  However, I've also seen a utility application converted to a design application -- presumably because the utility application was having trouble with those pesky novelty and non-obviousness requirements.  So, I'm probably wrong about the inherent incompatibility of utility and design patents.  Thankfully, this is all theory and hypothesis.
 
However, that's how I'd start out -- picking one or more functional aspects of the yukelele neck for utility applications and one or more purely aesthetic aspects for design applications.
 
As for what to do with no money, I'd answer your question with one or two questions of my own:  How important is it to your business plan that the patents not only issue but are actually enforceable?  Second, how certain are you of your business plan if you can't convince a single investor to help fund your business plan properly?  Remember, patents are merely one piece of a fairly complex puzzle.
 
Regards.
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James D. Ivey
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Re: Utility AND Design patents on the same item??
« Reply #2 on: Mar 12th, 2005, 2:12pm »
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WarrenDekker wrote Man A assumes that the only way to keep Company B from harassing him, is to have a patent on his neck design, which he believes is unique.
 
A patent gives the right to exclude others from making, selling, or importing the patented item.  It does not confer the right to make, sell, or import.
 
Using Warrens example, suppose that Company B owns valid, enforceable patents on the ukulele.  Company Bs patents claim string instruments with certain shapes and size ratios of various parts.  Company B also has patents relating to how the tension on the strings is adjusted, and the method by which the strings are attached to the instrument.  Collectively, Company Bs patents broadly claim ukuleles and are distinct from other string instruments.
 
Man A develops his novel, non-obvious ukulele neck and obtains a patent.  Man A then manufactures a ukulele with the patented neck; in doing so Man A will have infringed Company Bs patents.  Regardless of whether or not Man A patented his ukulele neck, Company B still has the broad patents on ukuleles and may sue Man A for infringement.
 
Of course, if Man As neck design is truly superior, Company B may have interest in a cross-licensing arrangement.
 
Richard Tanzer
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Richard Tanzer
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