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.
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.
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
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.
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.
I also have the same question. Can anybody explain?
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..
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.).
Agree with Interen. Only adding that priority date is not applicable (cannot be claimed) if claims are to new matter.
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?
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
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.
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)
Got this one today.
Saw this one yesterday.
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
I think this is correct is it overall the invention is an obvious variant of the phone filed in Spain.
Got this one today. That’s all I remember!
I got this question 5/16/2011. The same variant as Overworkked mentioned.
Got this today 5/18/11
Same as Becker (looks like we had a LOT of the same questions)
There is no CIP for design. Please correct me if I am wrong.
I think you’re thinking of an RCE: see 1502.01 (H)
Got this one 6/28/11
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.
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.
Saw this 8/18. Said original patent would be 102(d) to his CIP.
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
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
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
Checked this at PTO. “C” is the Correct Answer.
Saw Overworkked’s variant today, 18 September 2011.
Got this question on 10/15/2011.
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).
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
Got the variant version 1/18/12
Can you please explain to me what “CIP kills the design” or something like that? If you file a CIP, what happens?
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
4/6/2012
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.
Got the variant on 4/25/12
Got this on on 5/22/12. Just like previous posts said. 102 killed the CIP.
Got this 5/23, same as everyone above.
Had this one today.
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
Had the variant question (6 months for designs) on 9/24/12.
Got this one today.
Got keypad variant. 06/21/13.
Also got keypad variant today, 8/5/2013, MPEP 8R9
Keypad variant, 11/14