Test takers report a “Spanish Phone” question involving a design patent.
Fact pattern: a phone was made in Spain. A US application covering the utility of the phone was filed within the appropriate time period. Later, the patent issues for the phone in Spain. Some time later, while the application is still at the USPTO, the inventors realize that they have a great looking phone and they want to get a patent for the design. What can they do?
A. File a design application claiming priority to the US application
B. File a CIP of the utility application
C. Give up
D. File a design application with priority based off the Spanish patent application
Answer: The Spanish phone question involves foreign filing in a DESIGN application. The answer is GIVE UP b/c you can’t perfect the claim after 6 months have passed under 102(d). They key is DESIGN v UTILITY foreign filing – patent priority must be claimed within 6 months (versus 1 year for utility). The foreign application becomes a statutory bar after 6 months under 102(d) to the US CIP design application.
Variant – A design patent was applied for in the US with foreign priority to Spanish patent. Later, the applicant alters the keypad design and files CIP for the new design. The key to this variant is the same as for the others: foreign priority and 102(d) is 6 months for design patents.