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Idiosyncrasies of Prosecuting U.S. Design Patents

Jori R. FullerJordan J. Pringle2019 Vol. 17 Issue 2 (snippets)

Under U.S. law, design patents cover the ornamental design of an object having practical utility. Accordingly, in a design patent application, the subject matter claimed is the design embodied in or applied to an article of manufacture, 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] In contrast to a utility patent, which protects the way an article is used and works, a design patent protects the way an article looks.[3]

In addition to design patents and utility patents providing separate legal protection, there are unique considerations when drafting and prosecuting U.S. design patents compared to drafting and prosecuting U.S. utility patents. This article focuses on those peculiarities of drafting and prosecuting U.S. design patents, including a list of potential pitfalls and idiosyncrasies to keep in mind when securing design patent protection for an ornamental design.

Design Patents Only Protect the Ornamental Feature of the Design

A design patent only protects the ornamental features of a product. Applicants should be aware of the relatively narrow scope of protection of a design patent when compared to a utility patent. If a design patent is the only protection for a product, a competitor could potentially make a similar product that performs the same functions but has a different ornamental design, thereby avoiding infringement. Thus, if a product is unique in the way it works as well as its ornamental design, then applicants should consider filing both a utility patent application and a design patent application to maximize protection. 

Filing a Utility Application Claiming Priority to a Design Application

What is often overlooked in separating design applications from utility applications relating to the same product, as discussed above, is the ability to file a utility application claiming priority to a design application. The biggest challenge in pursuing a utility application claiming priority to an earlier-filed design application is satisfying the written description requirement of 35 U.S.C. § 112. This section of the patent law requires that the drawings in the earlier-filed design application adequately describe the claimed subject matter of the utility application. In some cases, this written description requirement may be prohibitive, particularly with respect to more complex and/or non-mechanical subject matter. Thus, relying on a design application for priority in a utility application can be problematic in certain scenarios.

 Filing a Design Application Claiming Priority to a Utility Application

The flip side to the scenario outlined in Section 2 above is the ability to file a design application claiming priority to a utility application.[4] One benefit of filing a design application claiming priority to a utility application is that the life of a design patent is not limited by the filing or priority date of the earlier-filed utility application. Instead, the life of a design patent is determined by the issue date of the design patent.[5] Thus, the term of an issued design patent claiming priority to a utility application shifts further into the future as compared to a scenario where the design and utility applications are concurrently filed. In addition, since design patent term is based on the issue date, patent term adjustment is not necessary (or available).

However, although the filing of a design patent application claiming priority to a utility application is available at any time during the pendency of the utility application, the strict drawing requirements of design applications provide a substantial limit to this practice. In particular, the Manual of Patent Examining Procedure (MPEP) states “[a]s the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture.”[6] As such, the ability to file a design application claiming priority to a utility application is effectively limited by the detail of the drawings that were originally filed in the utility application.[7] Thus, if an applicant has the intention to file a design application claiming priority to a utility application, the drawings that are filed in the utility application should include the detail required in design applications.

Six Month Priority Deadline

In order to obtain the benefit of an earlier foreign filing date, the U.S. design application must be filed within six months of the earliest date on which any foreign application for the same design was filed.[8] Similarly, any foreign design patent claiming the priority of an earlier filed U.S. design application must be filed within six months of the earliest date on which the U.S design application was filed. In addition, in the case where a U.S. design application claims benefit under 35 U.S.C. § 120 to an intermediate nonprovisional utility patent application that directly claims priority to a foreign application, the intermediate nonprovisional utility application must have been filed within six months of the filing date of the foreign priority application in order for the design patent application to obtain the benefit of the earlier foreign filing date.[9] Thus, it is important to be aware that, unlike the twelve month priority period of utility applications, design applications have a more abbreviated timeline in which a decision must be made with respect to foreign filings.

The PCT is Not Available for Design Patents

The MPEP states that design patent applications are not included in the Patent Cooperation Treaty (PCT), and the procedures followed for PCT applications are not to be followed for design patents.[10] This essentially means that there is no such thing as a PCT design patent application. Rather, an international design application (IDA) designating various countries may be filed for design protection under the Hague System, which is administered by WIPO. An IDA can designate up to 70 countries,[11] each of which would consider the design under its own laws. Some countries, such as Japan and South Korea will substantively examine the IDA, while others, such as the European Union (EU), do not perform a substantive examination. Notably, at present, Australia, Brazil, China, India, and Mexico are not yet participating in the Hague System. In most cases, Applicants will file directly in their countries of interest when making foreign filings claiming priority to a U.S. design application.

Design Patent and Trademark Overlap

A design patent and a trademark may be obtained to cover the same subject matter.[12] However, the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and no right accruing from one is dependent or conditioned by the right concomitant to the other.[13] That said, pursuing one may well impact your pursuit and prosecution strategies for the other. For example, while it is improper to use a trademark alone or coupled with the word “type” (e.g., Band-Aid type Bandage) in the title of a design patent application, the use of trademarks in a design patent application specification is permitted under limited circumstances.[14] But, when a trademark is used in the drawings of a design patent application, the specification must include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the registered trademark. In addition, if the trademarked name of a product is included in the drawings, it may be beneficial to have the name in dotted lines to indicate that the name does not form a part of the invention.

Design Patent and Copyright Overlap

There is also an area of overlap between copyright and design patent statutes where the author/inventor can secure both a copyright and a design patent.[15] Thus, an ornamental design can be both the subject matter of a design patent and copyrighted as a work of art. The author/inventor may not be required to elect between securing a copyright or a design patent.[16] If an applicant is seeking to protect a copyrighted work in a design patent, the applicant should include a copyright notice in the design patent application. The following waiver should be included at the beginning (preferably as the first paragraph) of the specification of the design patent application: “A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyright rights whatsoever.”[17] Any departure from this language may result in a refusal to permit the desired inclusion.

Conclusion

In summary, design patents should be considered to provide an alternative or additional means of protection for an invention. When preparing and prosecuting an application for an ornamental design, the guidelines outlined above illustrating the differences between design applications and utility applications, as well as the overlap with trademark and copyright law, should be considered.

[1] Ex parte Cady, 1916 Dec. Comm’r Pat. 62.

[2] Manual of Patent Examining Procedure (MPEP) § 1502.

[3] Compare 35 U.S.C. § 101, with 35 U.S.C. § 171.

[4] While design patents can claim priority to nonprovisional utility applications, design applications may not claim the benefit of a provisional application under 35 U.S.C. § 119(e).

[5] Design patents command a term of fourteen years from issuance for those issuing based on applications filed on or before May 13, 2015, and fifteen years for those issuing based on applications filed after May 13, 2015. See MPEP § 2701.

[6] See MPEP § 1502.03.

[7]See In re Owens, 710 F.3d 1362, 1368-69 (Fed. Cir. 2013) (The Federal Circuit denied a priority claim in a design patent application where the prior filed utility application drawing did not include broken lines. The addition of these broken lines in the design patent application was deemed new matter, rendering the priority claim ineffective). 

[8] See MPEP § 1504.10.

[9] See 35 U.S.C. § 172.

[10] See MPEP § 1501.

[11] See Hague Agreement Concerning the International Registration of Industrial Designs: Status on March 4, 2019, WIPO, https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf.

[12] See MPEP § 1512.

[13] See In re Mogen David Wine Corp., 328 F.2d 925 (C.C.P.A. 1964), aff’d, 372 F.2d 539 (C.C.P.A. 1967).

[14] See MPEP § 608.01(v).

[15] See MPEP § 1512.

[16] See In re Yardley, 493 F.2d 1389 (C.C.P.A. 1974).

[17] See MPEP § 1512.