You are a clothing designer and you just came up with the coolest new shirt. It makes the
wearer smarter. Yep – a guaranteed increase of 25 IQ points. The shirt is also striking looking – it
has three distinct straps that serve no purpose in making you smarter, but it makes the shirt look
absolutely amazing. You want to protect your new US-made shirt from others copying it and several people have told you to patent it. What does that exactly mean?
1. There are two different types of patents in the U.S. – utility and design.
The United States Patent & Trademark Office (USPTO) grants (or rejects) utility and design patent applications (also “plant” applications and trademark registrations, but we won’t discuss here). A utility patent covers a new and useful process, machine, manufacture, or composition of matter. It protects the functional aspects of a useful invention. A design patent protects only aesthetic features of a useful invention. It cannot have functional aspects. Huh?
2. So what’s the difference between a utility and a design patent?
A utility patent protects the way an article is used and works. Your new shirt may be eligible for a utility patent because it is functional (it is capable of making you 25 points smarter, remember?). No shirt has ever done that before. This is new technology that serves a new and useful purpose.
A design patent protects the appearance of something – for aesthetic purposes, not for structural or utilitarian features. Your shirt could also be eligible for a design patent because the straps on your shirt do not serve a purpose. The straps play no role in the technology that makes you smarter and could have been left off altogether. Because the straps on your shirt are ornamental (and not functional), the shirt could be eligible to be protected by a design patent.
3. Which one should you choose?
Both types of patents give you a monopoly to exclude others from using, making, selling, offering for sale, or importing the shirt, but with differing patent terms. For a utility patent, that right to exclude is 20 years from the date the patent application is filed (there may be some adjustments). For a design patent, that protection is usually 14 years from the date the design patent is granted. However, it generally takes much longer for a utility patent to get through the
USPTO than a design patent. To be clear, once you are granted a patent, you don’t get the right to make the invention – you get the right to keep/stop others from making it and you can license others to make the invention for you if you don’t want to manufacture it yourself.
4. Why a Utility Patent?
Utility patents are a lot more expensive to get. In exchange for the monopoly, the inventor/patent owner must teach others how to create or duplicate the invention. The requirements are complex and require a lot of back and forth with the patent examiner. Here, your application must include specific descriptions of what other apparel, if any, is capable of making the wearer smarter, what is new and novel being taught here, how to make this shirt (hey – if you don’t want to share this new tech and it isn’t easy to reverse engineer, you should consider keeping it a trade secret… perhaps a blog post on trade secrets is next!), the best way to make this shirt, drawings of the shirt, and detailed claims (the metes and bounds of the invention) covering the shirt. A typical utility application can cost upwards of $25k, including USPTO costs and attorney fees.
An advantage of teaching this wearable tech and getting a utility patent would be that you could cover variations of this invention. If you can teach use of this tech in hats, pants, socks, and scarves, for example, you may not be limited to protecting your invention to just the shirt.
5. Why a Design Patent?
Design patents typically make it through the USPTO much faster than a utility patent; in fact, it could be years faster. It is also typically much cheaper. A design patent can be around $7k. This is because a design patent application does not include claims at the end of the patent or any written details describing how it is new vs. the what already exists or how to make the invention. A design application consists of just drawings.
On the flip side, the utility patent advantage is that you would be protected by any variations to the design patent you are granted. If a competitor changes aspects of your invention enough (altering the amount of straps, for example) so that an ordinary observer does not confuse your shirts, you would not win an infringement suit against her. It used to be that utility patents were thought to be “stronger” than design patents.
However, recent cases show that design patents have as many teeth as utility patents. The infamous Apple v. Samsung wars were fought over design patents and major apparel designers and clothing manufacturers are using design patents to protect themselves. Lululemon has multiple design patents on its sports bras and yoga pants and hasn’t been afraid to assert them.
Lulu has sued Calvin Klein, G-III and Under Armour; while they haven’t gone to trial and the settlements are confidential, Lulu’s aggressive enforcement supports the strength of design patents.
Now you know the basics of patenting your new smart shirt clothing line… now go put it on and decide which one, or both, to pursue!
Neal, Gerber & Eisenberg