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[Cocolroo]

If a design patent is a patent that covers the ornamental design of the invention  does functionality come into play on it as well.
For example ive filed a design patent on a cleaning caddie but the improvement on the function is what changes the design
(more convenient for the user to carry and set down).Wouldnt that also be utility.
But I was told a utility patent would be hard to get for it because it is really an improvement on something that already exist,which is
a rectangular cleaning caddie.
But of course a design will change when your improving its function.Kind of like whats first chicken or egg.
My confusion is also having to do with what is the determination on what makes one design differnt than the other to obtain another design patent.I was told 20% different is enough but that just seems to easy.
So for example lets say I come up with the invention of the first tool box that can hang fro the ceiling and can be moved around
a car when im working on it without tying up floor space.That is its improvement of functionality although a plastic tool box has already
been around forever.
So if I could only get a design patent on it an then someone comes along an creates a tool box that hangs from the ceiling but is now circular in shape and has more screwdriver slots is that enough to make it defferent to get another patent even though the way in which it hangs from the ceiling is the same.
Hope this makes sense and thanks for any responses.

[heyitsjohn2002]

But I was told a utility patent would be hard to get for it because it is really an improvement on something that already exist,which is

an improvement on something that already exists is a fundemental underpinning of the patent system.  While it may or may not be hard to get a patent for your improvement, the reason that it might be hard has nothing to do with the fact that it is an improvement.

As for design patents, they do not protect functionality, per se. However, if the functionality is part of the ornamental aspects, then there's a layer of protection that comes with protecting the ornamental aspects.

It is very much the case that there are "things" out there that are best protected by combination of design patent, utility patent, copyright, and a trademark (if dealing with goods/services).

[Cocolroo]

"As for design patents, they do not protect functionality, per se. However, if the functionality is part of the ornamental aspects, then there's a layer of protection that comes with protecting the ornamental aspects."

Thats what seems logical because it seems like you dont change the design of something unless its for a better function.
So function would have to come into play.Or anybody could just take an invention and change the color a little bit, add some
sparkles,maybe change the shape or texture and you have a new design patent.
So the only way to secure more  protection on a design patent is to think of all the possible ways the thing could be made and file a design patent on each one of them.
That being said it would seem that just one design patent by itself would only be valuable if it was a simple patent in which there werent many other variations that could be created.
If there was then one would have to either file a bunch more design patent or rely on the trademark and marketing to get it out there quickly if a utility patent wasnt a possibilty.

[CriterionD]

"However, if the functionality is part of the ornamental aspects, then there's a layer of protection that comes with protecting the ornamental aspects."

It might seem logical but that's not the case.  If the ornamental aspects are not purely ornamental they will not technically be protected by a design patent.  That doesn't necessarily mean that the design patent won't be granted, but it might not be enforceable in a court of law where the ornamental aspects claimed also serve actual "utility." That basically means that the ornamental design cannot serve any real purpose beyond, say, looking pretty.

Of course, if for example a certain ornamental shape will serve utility, you can file a utility patent and the utility patent can inadvertently protect that shape, although the shape will not be considered ornamental.

Now, regardless of any patent filed, any ornamental aspects of a product/packaging/etc can become subject to trade dress protection, a type of trademark protection.  The challenge in developing trade dress protection is that consumers must come to specifically associate a specific design, or what not, with your company/brand/whatever.  That can take years but that is actually where a design patent can be most valuable, as it can provide assistance in initially creating a better opportunity to forge the needed association.  Trade dress protection, like trademark protection, can be perpetual.

[Cocolroo]

"That doesn't necessarily mean that the design patent won't be granted, but it might not be enforceable in a court of law where the ornamental aspects claimed also serve actual "utility." That basically means that the ornamental design cannot serve any real purpose beyond, say, looking pretty."

See thats what I am having a hard time understanding because why would you change the ornamental configuration of something unless its for functionality such as solving a problem.
For example lets say the invention of a toothbrush with a small cup built into the other end.(for rinsing out your mouth)
The reason why the ornaments of it has changed is because of the change in its functionality.
How can that not come into play.
It wasn just designed because it is a different look in a tooth brush.
Then would a design patent only apply for say clothes,a shape of a car or something like that?

[DogDayPM 9er9er9er]

See thats what I am having a hard time understanding because why would you change the ornamental configuration of something unless its for functionality such as solving a problem.
For example lets say the invention of a toothbrush with a small cup built into the other end.(for rinsing out your mouth)
The reason why the ornaments of it has changed is because of the change in its functionality.
How can that not come into play.  It wasn't just designed because it is a different look in a tooth brush.

http://patft.uspto.gov/netahtml/PTO/search-bool.html
http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=0&f=S&l=50&TERM1=4&FIELD1=KD&co1=AND&TERM2=toothbrush&FIELD2=&d=PTXT

Cocolroo, it may help you to look at some design patents.  The second large link above should take you to a bunch of design patents recently granted relating to toothbrushes.  (If it does not work, go to the 1st link, put the numeral 4 into the first search block and select "Application Type" from the drop-down menu on the right, and in the second box on the left just type the word toothbrush).

Take a look at D603,170 called "Toothbrush Handle".  Note if you click on the Images button and can't see any images, go to the tiny "Help" link near the top right, which will tell you how to download a free TIFF viewer.  Or take the patent number to Google Patents for example (link below).  http://www.google.com/patents/about?id=7LTJAAAAEBAJ&dq=D603170

The design patent as you can see is the way the back of the toothbrush head looks, right?  Heck, all it is, is a bunch of bumpy bits likely intended to function as a tongue scraper.  That's just a functional thing, right?  But wait - look how they're arranged.  If I'm the patentee, my argument is the exact arrangement of those functional bumpy bits is based on aesthetic choices, not function.  After all, I could have had them simply lined up at a 45 degree angle running all the way across the head, or even as two sets of lines, left and right, where they were arranged running horizontally, or at angles, whatever.  Any of these configurations would have worked essentially the same from a functional standpoint.  But putting them in that imitative circle pattern with arcs haloing above and below, that's my inventive ornamental feature (remember, I'm arguing on behalf of the patentee).

Also, any toothbrush head must have a shape that is within certain parameters to function properly, right?  But within those parameters, certain design choices relating to the shape of the head may be made for purely ornamental reasons.  Here, I've decided to make my head shape a modified pear, having a more bulbous lower region, mid-sides that are never quite parallel and which taper gently to a gently rounded top portion of the head.  Beautiful, ain't she?!

Anyway, that's the idea.  Using your example, there are any number of ways to ornament with the exact shapes chosen or detail markings that make a brush+spit cup more than just a plain brush + spit cup.

[CriterionD]

why would you change the ornamental configuration of something unless its for functionality such as solving a problem.

Because you are aiming for a unique appearance.  You could be adding beautiful artwork to a T-Shirt or just trying to market something with a unique shape that consumers could come to associate with your specific brand - it could provide an easy way for consumers to tell your product apart from others'.  And in some situations, maybe you just want to have a design patent so you can market your item as "patented."

Now one could argue that the appearance of an item does effect that item's function simply by evoking certain emotions, and what not.  In this sense, legal technicality/definitions aside, "ornamental" is "functional." But that's besides the point. 

[Cocolroo]

So if im not mistaken using the tooth brush scenario if someone were looking to get a patent on the tooth brush then the toothbrush itself would be a utility patent and all the other added ornamental features would be different design patents.
And if this is the case then it really doesnt take much of a change  to add something and get another design patent.
Thats sort of discouraging because in my case If I cant get a utility patent and only a design patent on my caddie then all that has to be done is slight ornanmental changes like examples of the tooth brush and voila,a new patent.
So in this case I might have to rely on heavy marketing an saturation or a least apply for a utility patent
and even if I dont get I have some buffer time to get it to market and maybe put it in the hands of someone that can run with it faster then I can.
By the way thanks for the reponses to this post.
I appreciate the time you guys take to explain and clarify this to me.

[DogDayPM 9er9er9er]

...Thats sort of discouraging because in my case If I cant get a utility patent and only a design patent on my caddie then all that has to be done is slight ornanmental changes like examples of the tooth brush and voila,a new patent....

So in this case I might have to rely on heavy marketing an saturation or a least apply for a utility patent..

Generally, it's not the idea that someone else might make a small change to your design and then get a design patent of their own that you should be worrried about.  It's the idea that someone need only make relatively small ornamental changes to your design such that they would not be infringing your design patent. 

Remember that having a patent does not give the patent owner the right to make their patented product.  It only gives the owner the right to stop others from making the patented product.

Heavy marketing is good.  Having a utility patent may be better than a design patent alone, but a utility patent is only as good as the prior art allows.  If there are similar products already disclosed to the public, your utility patent may end up with very narrow claims that (like a design patent) may be easily designed around to avoid infringement.  That's the chance one takes.

[Cocolroo]

Remember that having a patent does not give the patent owner the right to make their patented product.  It only gives the owner the right to stop others from making the patented product.

Ok I understood up to this paragraph.
Im not getting this because you say having a patent does not give the patent owner the right to make their patented product but only stops others.
So if one has a patent on a product why couldnt they then make it.In others words you go for a patent
also to make sure your not making something that exists already so you can feel safe in making it.
Or the only thing I can understand what your saying is just because you have a design patent on something doesnt mean you can it make because if someone else has a utility patent on the same idea
then yours would infringe ,assuming their is a utility?
Thanks

[Yak]

Cocolroo,
I think what Dogday is saying is one of the most commonly misunderstood concepts in patent protection from the inventor's point of view.  A patent for an invention grants the owner of that patent the right to control or exclude others from making, using, selling, offering for sale, or importing an invention which is covered by the patent for the enforcable life of that patent.  The patent does not give the inventor the right to make, use, sell, offer for sale, or import that invention. 

This is due to the fact that you may receive a patent for Gadget XY, which is an improvement to Gadget X.  Gadget X may be patented by Inventor X.  Your invention (Gadget XY) was deemed novel and non-obvious by the USPTO and a patent for Gadget XY was issued to you.  Gadget X comprises features ABC.  Your invention added the novel feature D to Gadget X.  So now Gadget XY comprises features ABCD. 

Now you cannot make, use, or sell Gadget XY without infringing upon Gadget X.  Conversely, Inventor X cannot improve Gadget X by adding feature D and make, use, sell, etc Gadget XY' without infringing upon your patent for Gadget XY. 

It is helpful you understand that Patent XY (for Gadget XY) will not infringe upon Patent X (for Gadget X).  Only making, using, selling, offering for sale, etc of Gadget XY would infringe upon Gadget X. 

[Cocolroo]

Ok as hard as that was follow for some reason that totally makes sense to me.
Thanks taking the time to put that in a logical easy to understand sequence Yak.
Up till now I always thought if you got a patent for an invention that meant you were in the clear to make that invention.
So back to the toothbrush scenario.If I make a toothbrush with say a suction cup and get a design patent  but someone has
a patent on the tooth brush itself then I cant make and sell that of toothbrush ...that  is unless the original
patent has expired or say a licensing agreement was in place?
What other scenarios on this would there be because seems like the majority of inventions and patents are just improvements on other products so seems like there is a lot of infringement going on out there.

[MYK]

What other scenarios on this would there be because seems like the majority of inventions and patents are just improvements on other products so seems like there is a lot of infringement going on out there.

Thing is, after anywhere from four to twenty years after a patent gets issued (depending on whether the patentee decides to keep paying the maintenance fees), it expires.  At that point, anything in it is fair game.  There's no infringement if the patent is no longer in force.