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.
{ 10 comments… read them below or add one }
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?
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)
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.
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.
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.
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
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.
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.
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).
Had this on 6/7. CIP is the enemy of 102(d) – you don’t get the design patent.