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Guidelines for Drafting and Prosecuting U.S. Design Patents

Jori R. FullerJordan J. PringleSummer 2018 (snippets)

In the wake of the ongoing Apple v. Samsung saga, design patents are becoming increasingly popular as an additional or alternative mechanism to protect inventions. This article focuses on drafting and prosecuting U.S. design patents, including a list of best practices and things to keep in mind when securing design patent protection for an ornamental design.

U.S. design patents cover the ornamental design of an object having practical utility. “In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself.”[1] “Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.”[2] A “[d]esign is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.”[3] In contrast to “a ‘utility patent’ [that] protects the way an article is used and works, . . . a ‘design patent’ protects the way an article looks.”[4]

In addition to providing separate legal protection, design patents provide a number of advantages when compared to U.S. utility patents. First, design patents have a higher allowance rate. Through July of the fiscal year 2018, the allowance rate for U.S. design patent applications was 84%, compared to an allowance rate of 53.5% for U.S. utility patent applications.[5] Second, design patents have a faster time to final resolution. Through July of the fiscal year 2018, the time to final disposition for U.S. design patents was 19 months, compared to a time to final disposition of 24.1 months for U.S. utility patent applications.[6] Finally, design applications are typically less than half the cost of utility applications due to their expedited prosecution and the limited specification required in design patent applications.

As such, many innovators may find design patent protection an appealing option to provide additional protection for an innovative article of manufacture. Below are some guidelines to follow when preparing a U.S. design patent application.

  1. Know the Subject Matter Qualifications

A design patent protects the visual ornamental characteristics of an invention. A common misconception is that if there is any utility to the invention, a design patent is not available to cover the subject matter of that invention. However, this is not always the case. If the product is functional, but also includes features that are purely ornamental, a design patent may be obtained on those specific ornamental features. The question to ask is: what is unique? Is it the look of the invention, or only the function? If the design of the invention is dictated by function and lacks ornamentality, then a design patent would not be appropriate. However, if only the look of the invention is unique, or if both the look and function are unique, then a design patent may be appropriate.

  1. Drawing Quality is Key

As mentioned above, design patents protect only the ornamental characteristics of the design, which are the features shown in solid lines in the figures of the design patent application. Therefore, good quality drawings are essential, as they define the bounds of what exactly is protected. The design patent Examiner will require good quality drawings in order to grant the patent, but the quality of the drawings will also be important down the road if and when the scope of the patent is determined and the particular design being protected is interpreted. Use of a draftsperson that is familiar with the drawing requirements associated with design applications is highly recommended.[7]

  1. Figure Views Should be Consistent

Many rejections received by applicants for design patents involve inconsistencies in the drawings. Design patents require a sufficient number of views to completely disclose the appearance of the invention.[8] Most design patents require seven (7) views of the invention – front, rear, top, bottom, right side, left side, and at least one perspective view. These views must be consistent with each other so a full understanding of the design can be reached. Elements shown in each figure should be shown in all others, assuming that the element can be seen in that particular view. Solid and broken lines should be consistent as well.

  1. Use of Solid vs. Broken (Phantom) Lines

As discussed above, the solid lines in the figures of a design patent application function to define the scope of the invention. Broken (sometimes called phantom) lines may be used to show the environment in which the article is used, but do not form a part of the invention.[9] Therefore, if a product includes all the features shown in solid lines in a design patent, but not the features shown in broken lines, that product still infringes that design patent. Similarly, if a prior art reference shows the features in solid lines but not the broken lines of a design, that prior art reference can still anticipate the design patent application. An application that includes broken lines should include a paragraph in the specification indicating that the broken lines are for illustrative purposes only and form no part of the claimed design.[10]

In addition, broken lines may be used to broaden the scope of the design patent in a continuation application. For example, a continuation application may convert originally-disclosed solid line structure to broken lines.[11] Since it is the solid lines that function to define the scope of the invention, replacing solid lines with broken lines necessarily broadens the scope of the design patent.

  1. Include Additional Embodiments

Similar concepts with slightly different modifications, such as certain features being shown in solid and broken lines, should be filed in the same application. The Patent Office may or may not issue a restriction requirement, depending on how closely related the designs are, and further depending upon the particular Examiner assigned to your application.[12] Including different embodiments allows different levels of protection for the same invention. There is no downside to including embodiments of different scope in the same application. The Patent Office will issue a restriction if warranted, and subsequent divisional applications can be filed which are directed to the restricted embodiments. Alternatively, an Appendix including additional or related embodiments may be filed in the application. The Appendix will serve as support for future drawing amendments or continuation applications and should be canceled by the Examiner upon allowance of the application.

Conclusion

In short, design patents should be considered to provide an alternative or additional means of protection for an invention, and generally have a lower cost, higher allowance rate, and faster timeline than utility applications. The guidelines outlined above should be considered when preparing an application for an ornamental design.

© 2018 McDonnell Boehnen Hulbert & Berghoff LLP

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[1] Manual of Patent Examining Procedure (MPEP) § 1502 (citing Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916)).

[2] Id.

[3] Id.

[4] Id.; compare 35 U.S.C. § 101 with 35 U.S.C. § 171.

[5] Data Visualization Center, USPTO, https://www.uspto.gov/dashboards/patents/main.dashxml (last visited Aug. 20, 2018).

[6] Id.

[7] The Patent Office’s Design Patent Application Guide, available at https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide, provides such guidelines for drawings along with other additional requirements for U.S. design patent applications.

[8] See MPEP § 1503.02.

[9] Id.

[10] Id.

[11] See MPEP § 1504.04, subsection I.B.

[12] See MPEP § 1504.05.