Design patents vs. utility patents vs. plant patents
You made a discovery and now you’d like to protect it. The U.S. Constitution, Article 1, Section 1, Clause 8 empowered Congress to pass laws “to promote the progress of science and useful arts, by securing for limited times to … inventors the exclusive right to their respective … discoveries.”[i] It excised this power by enacting the Patent Act. And patents are one mechanism for protecting your invention. But what type of patent best covers your discovery? The following Q&A reviews the different types of patents and how they are obtained.
Q. What protection does a patent provide?
A United States patent is a property right that entitles a patent holder, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the United States, the subject matter within the scope of the protection granted by the patent.[ii] It is an affirmative right the patentee must exercise by filing a suit to stop someone else from practicing the patent without permission.
Q. What are there different types of patents?
In the United States, there are three broad categories of patents: utility, design, and plant.[iii] A utility patent generally covers some new and useful functional thing, such as a tool or a computer program. A design patent covers something non-functional and ornamental. And a plant patent covers a new plant that has been made by a person. The similarities and differences are discussed below.
Q. What are utility patents?
A utility patent covers “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[iv] Utility patents are the most prevalent type of patent. As of 2016, the United States Patent and Trademark Office estimated that 90% of the issued patent documents are utility patents.[v] For example, a utility patent (or multiple patents) could be obtained claiming a new type of wheel for a car, including methods of using the wheel.
Q. What are design patents?
A design patent covers “any new, original and ornamental design for an article of manufacture.”[vi] Unlike a utility patent, which protects the way an article is used and works, a design patent protects the way an article looks. Both design and utility patents may be obtained on the same article if there is invention in both its utility and design. Returning to the wheel example above, a design patent might cover the non-functional design or look of the wheel.
Q. What are plant patents?
A plant patent can be obtained by someone who “invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.”[vii] Plants that are asexually reproducible are those that “are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.”[viii] A plant that is capable of sexual reproduction, however, is not excluded from patent protection if it has also been asexually reproduced. As an example, in 1934, a United States Plant Patent was granted covering a “new and distinct variety of avocado having certain-highly desirable characteristics.”[ix]
The exclusion of tuber propagated plants include plants such as the Irish potato and the Jerusalem artichoke, since these types of plants are “propagated by the same part of the plant that is sold as food.”[x]
Q. Are utility, design, and plant patents governed by the same regulatory authority?
Yes. All types of patents in the United States—utility, design, and plants—are governed by the Patent Act, which is more formally known as Title 35 of the United States Code. Different sections, however, are specific to different types of patents. For example, Chapter 15 (Sections 161–164) exclusively governs plant patents, and Chapter 16 (Sections 171–173) exclusively governs design patents.
Q. Is the patent term the same for utility, design and plant patents?
No. While utility and plant patents carry the same patent term, design patents have a different term.
For utility and plant patents filed after June 8, 1995, the patent term is up to twenty years from the date of filing of the earliest related patent application. Utility and plant patents that were applied for on or before June 8, 1995, and that were or will be in force on June 8, 1995, have a patent term of seventeen years from the date of patent grant or twenty years from the date of filing of the earliest related patent application, whichever is longer.
On the other hand, design patents carry a term of fifteen years from the date of grant, if the application was filed on or after May 13, 2015. For design patent applications filed before May 13, 2015, the term is fourteen years from the date of the grant.
Q. Are utility, design, and plant patents granted by the same regulatory body?
Yes. All patent applications are examined by the United States Patent and Trademark Office.
[i] U.S. Const., art. I, § 8, cl. 8.
[ii] See 35 U.S.C. § 271(a).
[iii] There are three other categories of patents that are less common, and thus, not the focus of this post: reissue patents, defensive publications, and statutory invention registrations. See https://www.uspto.gov/web/offices/ac/ido/oeip/taf/data/patdesc.htm.
[iv] 35 U.S.C. § 101.
[vi] 35 U.S.C. § 171.
[vii] 35 U.S.C. § 161.
[viii] Manual of Patent Examining Procedure § 1601.
[ix] See USPP100P