Like plant patents and biotechnology, design patents are not tested extensively on the Prometric Patent Bar Exam. However, test takers report that they occasionally encounter a question from MPEP 1500. Know the following highlights:
Design patents consist of drawings, drawing descriptions, and a single claim. A brief narrative is optional. Design patents have a 14 year term.
- Design must be reproducible
- No claim to provisional
- Must be novel and non-obviousness
- Computer generated icons can receive design patents
- No offensive subject matter
- 112 applies
- © symbol can accompany design with a waiver to PTO
- “The ornamental design for (the article) as shown.”
- No Maintenance Fees
- No publication
- 6 months to claim priority to foreign apps
- No RCE; no reissue
OK: Design Apps. What are the big differences between design apps & normal utility apps?
- 1.There is only 1 claim allowed in any design app!
- As a corollary, if the examiner sees anything looking distinct/separate in the design app, a restriction to elect 1 claim will be mandatory (remember than in utility apps the restriction is not 100% mandatory if the examiner does not see an undue burden in the examination, but here it is).
- Divisional continuations are still available for restrictions in design apps.
- 2. The protection for a design patent only lasts for 14 years from the grant date. (20 years from effective filing date for a utility)
- 3. While a design app can get foreign priority under 35 U.S.C. 119(a)-(d), there is only a 6 month window from time of the earliest foreign filing until the U.S. filing that claims priority (as opposed to 12 months for a utility app)
- 4. A design patent cannot claim the benefit of a PA under 35 U.S.C. 119(e); BUT it can claim the benefit of a prior filed US NPA (35 U.S.C. 120 is OK).
- 5. There is no RCE under a design app, instead a CPA is used exclusively for continuations in design apps.
- 6. Design apps are never published.
- 7. There is no provision for an international app that is moved onto the national stage under the PCT for design apps (only US apps, or US apps claiming priority over purely-foreign design apps).
- Maintenance fees: Utility patents need maintenance fees paid after the patent is granted, design patents do not have these fees.
The Claim in Design Patents:
The (single) claim is of the form: “The ornamental design for (the article that embodies the design or the article that the design is applied to) as shown.”
The Elements in a Design Patent:
- 1. App fee & transmittal forms –> just like a utility app.
- 2. ADS –> just like a utility app. (giving basic info on the app, correspondance addresses, names of applicants, specifying if there is a preliminary amendment, declaring SES, etc.)
- 3. The specification. (including the single claim): (37 CFR 1.153, 1.154)
- There should be a Preamble & Title (this takes the place of the abstract). This just includes the title of the design & brief description.
- Next: The Description. The description usually is brief since most of the actual information about the design & ornamentation is actually contained in the drawing. As long as the descriptions clearly & accurately describe aspects of the drawings they are permitted (no particular format required). However, remember 35 U.S.C. 112 ¶ 2: If the descriptions are not clear the examiner can object and require that the descriptions be rewritten.
- The claim: See above, remember just 1 claim is allowed!
- Drawings: These are really the crux of a design patent since the whole point of the patent is around aesthetics & ornamentation.
- Views: Think of this like a draft design, give sufficient top, front, back, side views to fully disclose the appearance.
- Broken lines: These are useful when it is necessary to show the invention in a background environment where the environment is not claimed in the app, but is useful for properly showing the invention.
- Photos & Color Drawings: Remember 37 CFR 1.84, normally drawings must be B&W but if necessary the applicant can file a petitition (37 CFR 1.84) along with multiple copies of photos/color drawings and the requisite 37 CFR 1.17(h) fee to get the drawings included (if they are actually needed).
- Remember: there must be a clear statement that there are color photos/drawings that are available upon request from the USPTO.
1504 Examining the Design App:
- What is covered by design apps? (35 U.S.C. 171) “New, original, and ornamental design for an article of manufacture” Including:
- A design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (like the design on the outside)
- a design for the shape or configuration of the article (like the shape of the case, how the overall product appears)
- A combination of the first 2 categories.
- Computer Icons: They still have to meet the above requirement to be part of an ‘article of manufacture’ instead of just being abstract drawings:
- 2D computer icons are considered as surface ornamentation, so as long as this icon is part of another item of manufacture (like appearing on a monitor with a product) it is just another type of ornamentation. Example: Icons on an iPhone screen can get design patents.
- As long as there is an embodiment the icon may be patented.
- Lack of Ornamentality: The ornamentation has to actually have been made for the purpose of being decorative, it can’t just be a byproduct of the functional design. Example: I make a pulley system as part of an invention that might look nice. The pulleys are part of the function of the invention, and since they are not ornamental I cannot get a design patent on them.
- Simulations do not get patents: Remember, the ornament must be original, simply copying another design and reproducing it (simulation) is not original, no patent.
- Novelty: The factual inquiry is to determine if the new design is actually novel, and has not been anticipated in all respects by prior art. As long as the “average observer” would not see the prior art as anticipating the new design in every element, it is novel. (This is 35 U.S.C. 102 reasoning!) Remember, the prior art does not have to be analogous, it could come from any source.
- Nonobviousness (35 U.S.C. 103): The analogous art for designs is not the field for the functional part of the invention, it is the field for the actual types of design involved. Example: Say there is a repeated decorative pattern being patented, the fact that the product it is decorating is an outdoor table is not the field to look for analogous art. Instead, look at the field of products where similar patterns would be used in the ornamental sense.
- The overall appearance of the design must be considered.
- Prima facie obviousness test:
- Appropriate if the designer of ordinary skill would modify a prior art reference to remove some features to arrive at the new design (same thing as removing parts of an invention that are not functional, no patent for obviousness).
- As usual, the applicant may rebut a prima facie case for obviousness.
- 35 U.S.C. 112 Considerations:
- 1. Under paragraph 1: if the drawings do not properly disclose the design or if the designer of ordinary skill will not be able to reproduce the design from the information given in the spec/drawings then it will be rejected for not being properly described or enabled.
- 2. Under paragraph 2: Definiteness is still important in the claims. Simply saying “or similar article” , “or the like” will not be definite enough when describing the design. However, that broadening language could be OK if it is instead used in describing the types of environment in which the design would be used (like: “used in a kitchen or the like“) since that is just background info and not about the design itself.