Saturday, September 25, 2021

Clearing Up the Difference Between Utility Patents and Design Patents – Neither Is a Monopoly

Stuart K. Hayashi


A common misunderstanding is that a patent is a claim of ownership over the general idea for an entire product category. According to this misinterpretation, someone gaining a patent on her electric can-opener amounts to the government proclaiming that she now owns the  vague idea of “electric can-opener.” The same would happen if she gained a patent on her paperclip. From this comes a second misunderstanding, that the patent confers upon its owner a government-enforced monopoly over an industry. The patent holder would then be able to sue any other vendors who produce, without her permission, their own electric can-openers and their own paperclips. Worse, the patent holder would be able to sue these competitors successfully even if they arrived at their own designs independent of any observation of the patent holder’s model. 

 I have disputed those misunderstandings in previous blog posts (1, 2,3, 4, 5).

A patent is on a specific design of a feature or function of a product and does not impose a State-enforced monopoly on an industry or product category. A vendor can compete against any patent holder by coming up with a design that is similar but is not an exact duplicate.

Still, sometimes I get yet another response. This one comes less often from libertarian anarchists opposed to patent rights and more often from more commonsensical people who recognize the need for some form of intellectual property. The response is that there are two types of U.S. patents — design patents and utility patents. According to the rejoinder, it is true that a design patent is merely on a specific design only. However, the rejoinder continues, a utility patent really is a claim of ownership over a general idea, and it does grant its owner a government-enforced monopoly over an industry.

It is true that there are both design patents and utility patents. And it is true that there is a distinction between them. However, the distinction provided above is not accurate. Rather, the  purported distinction above comes from a misunderstanding of what a utility patent truly is and a misunderstanding of the extent to which enforcement of utility patents can be broader than it is for design patents.

In the end, both design patents and utility patents provide protection for a specific design feature. Neither claim ownership on a whole product category or industry.

I now will attempt to provide a more accurate explanation of the difference between design patents and utility patents. I will also try to explain how the mistaken conclusion that a utility patents provides its owner a monopoly originates from a misinterpretation of this distinction and of how utility patents are defined.


Design Patents
Design patents are on specific features directly observable by the senses. That is, for you to infringe on my design patent, units of your product have to resemble mine very closely in terms of how they look, feel, etc. For that reason, design patents are usually used to protect a design’s aesthetic qualities. One example is the design patent awarded to George Lucas for his Boba Fett action figure.
The design patent that George Lucas had on the Boba Fett action figure. Upon obtaining this patent, did George Lucas monopolize the entire toy industry? Could no one else make dolls?

Note that the U.S. patent number is US  D264,109 S. The D following the US is important. By the end of the essay, we will return to why that is.

That a design patent is about protecting properties of the design that are readily perceptible is also visible in other instances. Consider the ones recognizing fashion-apparel-and-lifestyle mogul Ralph Lauren’s ownership over this cologne bottle and this bed. Their U.S. patent numbers are, respectively, US D 259,098 S and US D 319,932 S. Once again note the D subsequent to the US. That is a trait common to all U.S. design patents. You will notice a different numbering convention for U.S. utility patents.


Utility Patents
Speaking of which, a utility patent protects a specific design feature with respect to a unit’s practical functionality — its utility, hence the name. What is being protected is a specific combination of engineering principles as applied to a particular design feature in the utility patent.

As principles are more abstract than the appeal to the senses that are readily observable in a design patent, the aspects of a design that a utility patent protects can be interpreted more broadly than what is typical for a design patent.

As examples of utility patents, I will provide two that Jack Northrop had on his airplanes that were “all wing.” 

These patents on his airplanes did not award Northrop a government-enforced monopoly on the production of airplanes. What these patents did mean was that Northrop had civil recourse if the totality all the engineering principles he employed were being copied by yet another vendor against his consent.

Two patents Northrop had on this sort of product were US 2,406,506 A and US 2,650,780 A.

Note the absence of a D after the US in the U.S. patent number.

That is how, just by looking at the U.S. patent number, you can tell if it is a design patent or a utility patent. For design patents, there is a D or Des. directly following the US (see here for Des. appearing). For utility patents, that is not present.


Evidence That a Utility Patent Is Not a Monopoly
This is the summary. The protected design attributes of a design patent can be readily perceived by the senses. To determine if a vendor peddled a knockoff of the cologne bottle on which Ralph Lauren had a design patent, all you need to do is look at both Ralph Lauren’s cologne bottle and that other vendor’s. Ditto in instances where George Lucas accused a vendor of producing unlicensed knockoffs of the Boba Fett action figure. Most often, the desired effect of the design protected by a design patent is an aesthetic or artistic one.

By contrast, the protected design attribute of a utility patent is its particular arrangement of parts in order to employ specific principles of science and engineering. And the effect is a practical one. The effect of the design protected in a utility patent is one of utility. Because the engineering principles specified in the utility patent are more abstract and less readily observable than what is found in design patents, there is greater room for interpretation when it comes to how courts decide if someone’s utility patent has been violated. More often than with design patents, engineers and other experts with specialized knowledge pertinent to the industry in which the invention is used must be called upon to determine if a utility patent is infringed. This is why enforcement of utility patents are usually broader than it is with design patents.

And that a utility patent can be interpreted more broadly than a design patent is where the confusion comes from. The confusion becomes the misconception that a utility patent does give the holder of a utility patent a monopoly on an entire industry.

But here’s the reality. Below is a table I made of U.S. utility patents on electric can-openers. 

Note that the interval between every new U.S. utility patent on electric can-openers and the previous one is shorter than 17 years. That is, every U.S. utility patent listed was issued prior to the expiration of the previous one. That happened even though all of these are US utility patents on “the electric can-opener.” That is because no US utility patent ever gave a party a State-enforced monopoly on the whole product category or industry of “electric can-openers.”

We find the same pattern in U.S. utility patents for paperclips, another invention for which I made a similar table.

Despite utility patents being interpreted more broadly than design patents in the matter of enforcement, having a US utility patent does not give any party a monopoly on the general idea of for a whole product category. It is not a government-enforced monopoly over an industry.