Q) Spanish Phone (MPEP 1500, Design Patent)

by patentbar on November 14, 2007 · 58 comments

in Exam Questions

Test takers report a “Spanish Phone” question involving a design patent.

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.

{ 58 comments… read them below or add one }

1 patentbarNo Gravatar December 12, 2007 at 2:43 am

For the design patent variant of the question – An old exam question discussed double patenting rejection of a design and a utility application for the same object. Chap 1500 specifically says that both a utility patent and a design patent may be issued for the same object. But then it goes on to say that there can be a double patenting rejection between a utility and a design patent. Can there be a double patenting rejection?

Reply

2 NooneNo Gravatar January 25, 2008 at 1:37 am

You can certainly get a design patent and a utility patent on the same invention. However, you can get a double patenting rejection on the design application if the claims from the utility application are sufficient to recreate the design (NOTE: you cannot rely on the drawings from the utility app)

Reply

3 nospamNo Gravatar February 22, 2008 at 8:18 am

This question would also require a review of the dates involved. As pointed out in the answer, the applicant has six months to file. The question as posed does not address whether the time frame has expired.

Reply

4 patentbarNo Gravatar August 19, 2008 at 8:30 pm

Variant reported on PatentBarQuestions – Spanish Phone, but with a twist: Wants to modify in US utility CIP with new dialing pad. Definitely after 6 months design application, 102(d); but wants it in utility CIP application.

Reply

5 luisNo Gravatar March 19, 2009 at 6:01 pm

For double patenting utility-design see:
Carman Industries, Inc. v. Wahl, 220 USPQ 481 (Fed. Cir. 1983).
basically they should not be claiming the same invention and could be overcome by terminal disclaimer. let’s say the utility discloses the design (in a picture) but is not claiming it, then you should be able to get a design patent and a utility patent.

Reply

6 samboNo Gravatar September 12, 2009 at 10:28 am

Got spanish phone Q, with revised dialing pad. Utility and Design patents filed.The ornamental design subsequently affects the utility applications function. What to do? CIP was definately and answer choice. I cant remember what I put

Reply

7 donNo Gravatar October 19, 2009 at 5:15 pm

as john white says for the PLI study course. 102(d) is the enemy of the CIP. CIP WILL BE REJECTED 102(d) if there is a prior foreign filing outside the 12 or 6 month window.

Reply

8 Emily M.No Gravatar February 13, 2010 at 9:05 pm

I got a version of this today. I think it was filed utility in Spain, then filed US design app within 6 months. New design was later filed as a CIP of the US design app. The answer I chose was something about the Spanish app being available as a prior art reference against the new design b/c the new design isn’t entitled to the first design app’s filing date.

Reply

9 SNo Gravatar June 5, 2010 at 6:35 am

I got the same version with a similar choice. I also chose the spanish app being to a prior art against the new CIP.

It is important to remember that CIP is the enemy of 102(d).

Reply

10 IrishNo Gravatar June 9, 2010 at 4:57 pm

Had this on 6/7. CIP is the enemy of 102(d) – you don’t get the design patent.

Reply

11 DamienNo Gravatar November 21, 2010 at 8:01 pm

got this question today – the variant, filed design in spain, filed within 6 months in US then sometime later wanted to file CIP covering a different keypad – i selected wasnt allowed under 102d – passed

Reply

12 Boating BobNo Gravatar December 30, 2010 at 5:45 pm

12/30/10 – had this question today. They wanted to file a CIP in the US to claim their old and new design. Asked if the filing of the CIP in the US after 6 months would lead to the Spanish patent being considered prior art against the CIP.

Reply

13 ConfusedNo Gravatar January 15, 2011 at 3:57 pm

I have a question – is the new design in the later filed CIP also anticipated/rejected by the earlier filed patents? It seems to me that earlier filed patents won’t have the enabling disclosure for the new design in the later filed CIP… Could anybody please help me understand this?
Thank you.

Reply

14 AngelaNo Gravatar February 24, 2011 at 10:39 am

I also have the same question. Can anybody explain?

Reply

15 InterenNo Gravatar March 30, 2011 at 2:36 pm

My understanding: It depends whether you’ll have a claim concerning the CIP’s new addition only. If you do, then that claim is NOT subject to 102d. Someone correct me, if I am wrong..

Reply

16 misspatentNo Gravatar March 31, 2011 at 12:32 pm

Under 102(d), “same invention” = invention that was disclosed and could have been disclosed. See MPEP 2136: In re Kathawala, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 1993) (Applicant was granted a Spanish patent claiming a method of making a composition. The patent disclosed compounds, methods of use and processes of making the compounds. After the Spanish patent was granted, the applicant filed a U.S. application with claims directed to the compound but not the pro­cess of making it. The Federal Circuit held that it did not matter that the claims in the U.S. application were directed to the composition instead of the process because the foreign specification would have supported claims to the composition. It was immaterial that the formulations were unpatentable pharmaceutical compositions in Spain.).

17 Big Bad Voodoo DaddyNo Gravatar June 4, 2011 at 11:36 pm

Agree with Interen. Only adding that priority date is not applicable (cannot be claimed) if claims are to new matter.

18 MCNo Gravatar April 5, 2012 at 1:51 pm

Like Voodoodaddy, I also agree with Interen. The CIP is NOT automatically barred via 102(d), however, it IS vulnerable to a 103 rejection based on the foreign patent. So basically “102(d) is the enemy of the CIP” ONLY if the CIP is an obvious variant of the foreign patent, which is usually the case anyway. [MPEP 2135.01, I. B: “If the foreign application issues into a patent before the filing date of the CIP, it may be used in a 35 U.S.C. 102(d)/103 rejection if the subject matter added to the CIP does not render the claims nonobvious over the foreign patent…. Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103).]

Misspatent’s explanation is incorrect because the MPEP quote she provides is NOT in the context of a CIP. Rather, it is referring to the “same invention” requirement of the original US application.

Can someone confirm?

19 maggieNo Gravatar October 19, 2011 at 3:23 am

It is going to be a 102(d) Bar to your US patent
102 (d)
Issued foregin patent before US app filing date you must get on file in US Before 12 months (utility), 6 months (designs) from frogein filing date to gain priority for Foreign app –> if not 102(d) barred from patenting
(1) Same inventor/owner assignee
(2) Don’t have to be identical in claims but same invention

Reply

20 maggieNo Gravatar October 19, 2011 at 4:45 pm

35 U.S.C. §102(d);

MPEP §2135.01, A Continuation – In – Part Breaks The Chain Of Priority As To Foreign As Well As U.S. Parents.

21 maggieNo Gravatar October 19, 2011 at 4:52 pm

and…
2135.01 The Four Requirements of 35 U.S.C. 102(d)
102(d) rejection applies if applicant’s foreign application supports the subject matter of the U.S. claims (even if more is claimed in US app)

22 AnneNo Gravatar January 19, 2011 at 4:01 pm

Got this one today.

Reply

23 ELSNo Gravatar March 7, 2011 at 10:42 am

Saw this one yesterday.

Reply

24 No Gravatar March 31, 2011 at 11:00 am
25 OverworkkedNo Gravatar April 28, 2011 at 1:07 pm

VARIANT on 4/27/2011 MPEP E8R8:

A design patent was applied for in the US with foreign priority to Spanish patent. Later, the applicant alters the keypad design and wants to patent the NEW modified design, can he do this?

A. something
B. something
C. If the prior patents anticipate or render obvious the new design, 102(d) kills the CIP. (My Answer)
D. something else
E. something

Reply

26 maggieNo Gravatar October 19, 2011 at 3:24 am

I think this is correct is it overall the invention is an obvious variant of the phone filed in Spain.

Reply

27 jacquiegardnerNo Gravatar May 3, 2011 at 6:42 pm

Got this one today. That’s all I remember!

Reply

28 BeckerNo Gravatar May 17, 2011 at 3:12 pm

I got this question 5/16/2011. The same variant as Overworkked mentioned.

Reply

29 SarahNo Gravatar May 18, 2011 at 3:46 pm

Got this today 5/18/11

Same as Becker (looks like we had a LOT of the same questions)

Reply

30 JulieNo Gravatar May 23, 2011 at 7:43 pm

There is no CIP for design. Please correct me if I am wrong.

Reply

31 BoNo Gravatar May 25, 2011 at 1:25 am

I think you’re thinking of an RCE: see 1502.01 (H)

Reply

32 AxoNo Gravatar June 29, 2011 at 11:18 am

Got this one 6/28/11

Reply

33 PaulNo Gravatar June 30, 2011 at 4:19 am

See 1504.20 Benefit Under 35 U.S.C. 120 [R-5]:

Where a continuation-in-part application claims benefit under 35 U.S.C. 120 of the filing date of an earlier application, **>which in turn claims the priority under 35 U.S.C. 119(a)-(d) of a foreign application, and the conditions of 35 U.S.C. 120 are not met, a determination as to whether the foreign application for patent/registration has matured into a form of patent protection must be made.The claim for the benefit of the earlier filing date under 35 U.S.C. 120 as a continuation-in-part should be denied and the claim for priority under 35 U.S.C. 119(a)-(d) should also be denied.< Form paragraph 15.75 may be used.

Reply

34 DanielNo Gravatar August 3, 2011 at 11:08 am

Had a slight variant of this on 7/29/2011. They added facts at the end, but it didn’t change the answer. Had busted the six month deadline.

Reply

35 TJLNo Gravatar August 18, 2011 at 11:33 pm

Saw this 8/18. Said original patent would be 102(d) to his CIP.

Reply

36 maggieNo Gravatar August 27, 2011 at 1:27 am

I got this 8/24
A design patent was applied for in Spanish to a telephone that issued. Later, the applicant alters the keypad design and Application in USPTO for the new design for the key pad. Key pad is not supported by the parent application. You are in the 6 month window to get on file with US. –answer(s) what are your options for getting this new design app with key pad in the US

Reply

37 maggieNo Gravatar September 14, 2011 at 7:44 pm

A design patent was applied for in Spain to a telephone that issued. Later, the applicant alters the keypad design and Application in USPTO for the new design for the key pad. Key pad is not supported by the parent application. You are in the 6 month window to get on file with US. –Q what are your options for getting this new design app with key pad in the US

Reply

38 maggieNo Gravatar September 14, 2011 at 7:52 pm

Has any checked this answer at VA?? Thank you

A. something
B. something
C. If the prior patents anticipate or render obvious the new design, 102(d) kills the CIP. (My Answer)
D. something else
E. something

Reply

39 JRSNo Gravatar February 23, 2012 at 4:41 pm

Checked this at PTO. “C” is the Correct Answer.

40 RemandedNo Gravatar September 18, 2011 at 8:46 pm

Saw Overworkked’s variant today, 18 September 2011.

Reply

41 sgwNo Gravatar October 16, 2011 at 4:33 pm

Got this question on 10/15/2011.

Reply

42 JamecamNo Gravatar October 30, 2011 at 10:34 pm

I got this question on 10/29/2011.

The facts stated that the a foreign design patent was obtained and a U.S. design patent was filed within 6 months. A CIP application was filed after the 6 month deadline which could not claim the filing date of the previous application because the claims were not supported by its disclosure.

I chose the answer that the applicant was barred by 102(d).

Reply

43 ChemEEENo Gravatar November 9, 2011 at 6:26 pm

Got Maggie’s variant 11-7-11
answered same as her — If the prior patents anticipate or render obvious the new design, 102(d) kills the CIP

Reply

44 BagelmanNo Gravatar January 19, 2012 at 1:01 pm

Got the variant version 1/18/12

Reply

45 JenNo Gravatar January 19, 2012 at 2:10 pm

Can you please explain to me what “CIP kills the design” or something like that? If you file a CIP, what happens?

Reply

46 seanzNo Gravatar February 2, 2012 at 5:18 pm

I think they’re referring to the point that when you file a CIP, your added disclosure has to be less than 6 months after the filing date of foreign application too to properly claim priority as to the added new disclosure

47 TheGhostOfBilskiNo Gravatar April 10, 2012 at 11:46 pm

4/6/2012

Reply

48 SolNo Gravatar April 11, 2012 at 3:11 pm

Foreign Utility disclosing a drawing showing the design
12 month, US Utility nonpro claiming foreign priority
while the US nonpro is still pending
filing a Design Continuation app to claim the priority of the US Utiliy nonpro, 120 met(since you have a drawing showin the design, then OK you get the date of the US Utility nonpro fiing date.
BUT, can you further reach the Foreign date? NO, because it is out of 6 month
Meanwhile, the Foreign Utility is a 102(d) art

Foreign Utility disclosing a drawing showing the design
6 month, US Utility nonpro claiming foreign priority
while the US nonpro is still pending
filing a Design Continuation app to claim the priority of the US Utiliy nonpro, 120 met(since you have a drawing showin the design, then OK you get the date of the US Utility nonpro fiing date.
BUT, can you further reach the Foreign date? YES, because it is within 6 month
Meanwhile, the Foreign Utility is NOT a 102(d) art.

If the drawing is not included in the US Utility nonpro, then the design is NOT even entitled to the US Utility nonpro date let alone the Foreign Utilty date. Then you can say it is CIP, of course, but it does no good. The actual filing date is the effective filing date, if >6 month, Foreign is a 102(d) art. If <6 month, Foreign is not a 102(d) art.

Also, the Foreign app need to issue or say has mature into enforcable rights.

Drawing is just an easy example to mean 112 needs to be satisfied. It can words.

Reply

49 CGNo Gravatar April 26, 2012 at 7:28 am

Got the variant on 4/25/12

Reply

50 Miss_ANo Gravatar May 22, 2012 at 9:06 am

Got this on on 5/22/12. Just like previous posts said. 102 killed the CIP.

Reply

51 LaurenNo Gravatar May 24, 2012 at 11:54 am

Got this 5/23, same as everyone above.

Reply

52 DudeNo Gravatar August 20, 2012 at 5:34 pm

Had this one today.

Reply

53 firefoxNo Gravatar August 26, 2012 at 9:27 am

hey Dude, any other feedback about your recent exam? How much of the “new material” that is allegedly going to be tested heavily after the Oct 2 2012 deadline appeared on your exam? Any other generalization and areas that were tested more heavily than others? thanks

Reply

54 Wishful ThinkingNo Gravatar October 3, 2012 at 4:02 am

Had the variant question (6 months for designs) on 9/24/12.

Reply

55 RandomNo Gravatar October 15, 2012 at 8:30 pm

Got this one today.

Reply

56 EyestrainedNo Gravatar June 21, 2013 at 9:16 pm

Got keypad variant. 06/21/13.

Reply

57 MehNo Gravatar August 5, 2013 at 4:43 pm

Also got keypad variant today, 8/5/2013, MPEP 8R9

Reply

58 VinoNo Gravatar November 21, 2013 at 10:16 pm

Keypad variant, 11/14

Reply

Leave a Comment

Previous post:

Next post: