Definition of a Design
A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. 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. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.
In discharging its patent-related duties, the United States Patent and Trademark Office (USPTO or Office) examines applications and grants patents on inventions when applicants are entitled to them. The patent law provides for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features.
Types of Designs and Modified Forms
An ornamental design may be embodied in an entire article or only a portion of an article, or may be ornamentation applied to an article. If a design is directed to just surface ornamentation, it must be shown applied to an article in the drawings, and the article must be shown in broken lines, as it forms no part of the claimed design.
A design patent application may only have a single claim (37 CFR § 1.153). Designs that are independent and distinct must be filed in separate applications since they cannot be supported by a single claim. Designs are independent if there is no apparent relationship between two or more articles. For example, a pair of eyeglasses and a door handle are independent articles and must be claimed in separate applications. Designs are considered distinct if they have different shapes and appearances even though they are related articles. For example, two vases having different surface ornamentation creating distinct appearances must be claimed in separate applications. However, modified forms, or embodiments of a single design concept may be filed in one application. For example, vases with only minimal configuration differences may be considered a single design concept and both embodiments may be included in a single application.
The Difference Between Design Patents and Utility Patents
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). Both design patents and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.
Improper Subject Matter for Design Patents
A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. Specifically, if at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and is not proper subject matter. In addition, 35 U.S.C. 171 requires that a design to be patentable must be “original.” Clearly a design that simulates a well-known or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent application (35 U.S.C. 171 and 37 CFR § 1.3).
Invention Development Organizations
Invention Development Organizations (IDO) are private and public consulting and marketing businesses that exist to help inventors bring their inventions to market, or to otherwise profit from their ideas. While many of these organizations are legitimate, some are not. Be wary of any IDO that is willing to promote your invention or product without making a detailed inquiry into the merits of your idea and giving you a full range of options which may or may not include the pursuit of patent protection. Some IDOs will automatically recommend that you pursue patent protection for your idea with little regard for the value of any patent that may ultimately issue. For example, an IDO may recommend that you add ornamentation to your product in order to render it eligible for a design patent, but not really explain to you the purpose or effect of such a change. Because design patents protect only the appearance of an article of manufacture, it is possible that minimal differences between similar designs can render each patentable. Therefore, even though you may ultimately receive a design patent for your product, the protection afforded by such a patent may be somewhat limited. Finally, you should also be aware of the broad distinction between utility and design patents, and realize that a design patent may not give you the protection desired.
The Design Patent Application Process
The preparation of a design patent application and the conducting of the proceedings in the USPTO to obtain the design patent is an undertaking requiring the knowledge of patent law and rules and Patent and Trademark Office practice and procedures. The registered US patent attorneys at William Wintour, PC are specially trained in this field to best be able to secure the greatest patent protection to which you are entitled. While persons not skilled in this work may obtain a patent in many cases, there is no assurance that the patent obtained would adequately protect the particular design.
Of primary importance in a design patent application is the drawing disclosure, which illustrates the design patent being claimed. Unlike a utility patent application, where the “claim” describes the invention in a lengthy written explanation, the claim in a design patent application protects the overall visual appearance of the design, “described” in the drawings. It is essential that the applicant present a set of drawings (or photographs) of the highest quality which conform to the rules and standards which are reproduced in this guide. Changes to these drawings after the application has been filed, may introduce new matter, which is not permitted by law (35 U.S.C. 132). It is in applicant’s best interest to ensure that the drawing disclosure is clear and complete prior to filing the application, since an incomplete or poorly prepared drawing may result in a fatally defective disclosure which cannot become a patent. It is recommended that applicant retain the services of a professional draftsperson who specializes in preparing design patent drawings.
Filing A Design Patent Application
In addition to the drawing disclosure, additional forms and certain other information is necessary. There is a specific format required by the patent office and it is strongly suggested that applicant enlist the aid of the registered US patent attorneys at William Wintour, PC to assist in the drafting of the application.
When a complete design patent application, along with the appropriate filing fee, is received by the US Patent Office, it is assigned an Application Number and a Filing Date. A “Filing Receipt” containing this information is sent to the applicant. The application is then assigned to an examiner. Applications are examined in order of their filing date unless priority examination has been paid for, or the applicant has qualified for accelerated examination somehow.
The actual “examination” entails checking for compliance with formalities, ensuring completeness of the drawing disclosure and a comparison of the claimed subject matter with the “prior art.” “Prior art” consists of issued patents and published materials. If the claimed subject matter is found to be patentable, the application will be “allowed,” and instructions will be provided to applicant for completing the process to permit issuance as a patent.
The examiner may reject the claim in the application if the disclosure cannot be understood or is incomplete, or if a reference or combination of references found in the prior art, shows the claimed design to be unpatentable. The examiner will then issue an Office action detailing the rejection and addressing the substantive matters which effect patentability.
This Office action may also contain suggestions by the examiner for amendments to the application.
Important Patent Laws That Only Apply to Design Patent Applications
35 U.S.C. 172 Right of priority
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.
[Among other things, this means that all design patent applications filed in other countries based on an original application must be filed within 6 months of the original application, not the 12 month given to utility application, or the 30 months given to PCT applications]
35 U.S.C. 173 Term of design patent
Patents for designs shall be granted for the term of fourteen years from the date of grant.
[Unlike utility patent application, no maintenance fees are due during these 14 years]
Important Patent Rules That Only Apply to Design Patent Applications
37 CFR 1.84 Standards for Design Patent Drawings
(a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
(2) Color. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility or design patent application or the subject matter of a statutory invention registration. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13), or in an application, or copy thereof, submitted under the Office electronic filing system. The Office will accept color drawings in utility or design patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary… [redacted]
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention… [redacted]
37 CFR 1.152 Design Patent Drawings
The design patent must be represented by a drawing that complies with the requirements of § 1.84 [all] and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.