This is the second installment of a two-part series on design patents. Part I covered the basics of design patents and compared them with other IP protections, such as trademarks and copyrights. This part will discuss the design application process and briefly touch on the prosecution of such applications
The Design Patent Application
A U.S. design patent application primarily consists of a specification and drawings. The specification is generally composed of a title, a description, and a claim. The drawings are comprised of at least one figure and serve as the claims for the design patent.
The title of a design patent application “identifies the article in which the design is embodied by the name generally known and used by the public, and may contribute to defining the scope of the claim.” The title should not be directed to less than the claimed design shown in the drawings.
The design patent’s description should be very minimal. An overly narrow description of the figures may not fully describe the invention and allow products to escape infringement. Accordingly, the description of the figures should be limited to identifying the view presented – top plan, bottom plan, front elevation, back elevation, side elevation, perspective, etc.
The drawings are the most important part of a design patent because they truly constitute the claim that may be enforced against infringers. The most common rejection/objection an application typically encounters during design patent application prosecution will be directed to the quality of the drawings, or that they do not sufficiently disclose the claimed article or portion thereof, and thus do not comply with 35 U.S.C. §112. The USPTO will often remind applicants that:
“the necessity for good drawings in a design patent application cannot be overemphasized. As the drawings constitute 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. An insufficient drawing may be fatal to validity (35 U.S.C. §112(a) or pre-AIA 35 U.S.C. §112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.” (MPEP 1503.92)
To comply with the written description requirement of 35 U.S.C. §112, it is important to present a complete picture of the claimed article or portion thereof. Ideally, the design claim embodied by the drawings should be comprised of at least one perspective view, a top view, a bottom view, side views, a front view, and a rear view. In instances where the design appears identical in the left view and the right view, for example, the applicant can omit one view and state that the omitted view is a “mirror image” of the omitted view.
Portions of the article of manufacture that are normally not seen, such as the internal structure of an article, should not be shown. This means cross-sectional views are not normally required, unless the contour or configuration of the exterior surface of the claimed design is not apparent from the standard views. Surface shading to show contour, for example, is not required, but an examiner may request such to be added to the drawings if it is deemed essential for the understanding of the claimed design.
The drawings should be clear and concise when the application is filed, because amending drawings during prosecution is often difficult, as the examiner may allege that proposed amendments constitute “new matter.” Thus, it is usually best practice to present black and white line drawings for consideration. U.S. patent rules have become more open to the presentation of color drawings and photographs, which is common in many foreign jurisdictions. However, applicants should be aware that if color drawings are submitted, the color will be considered as an integral part of the disclosed and claimed design.
Applicants should also note that 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. Accordingly, applicants should consider including a disclaimer in the specification stating color, surface ornamentation, logos, written matter, and other forms not part of the claimed design. Photographs are only permitted if they are the only practical medium for illustrating the design (see 37 CFR 1.84(b)). Applicants must be wary when submitting photographs because examiners may object to the quality of the photographic disclosure, and attempts to amend the disclosure by showing the originally-submitted design in black and white line drawings will most likely result in a new matter rejection.
U.S. design patent rules permit the use of “broken lines,” or dashed lines (sometimes referred to as “stippled” lines by foreign jurisdictions), to designate environment related to the claimed design or to define the bounds of a claim. With respect to environment, broken lines are used to avoid adding unnecessary detail to the claimed design. An example of “environment” would be a broken line depiction of a portion of the design that is not intended to form part of the claimed invention. For example, a beer mug manufacturer can seek protection of a beer mug with a novel handle where the depiction of the beer mug would show all but the handle in broken lines.
A design patent application can include multiple embodiments (e.g., versions of the design) only if the designs presented are indistinct variants of each other (see MPEP 1504.05 (2017)). Thus, when filing a design patent application, applicants should consider submitting very detailed figures along with broader versions. If the patent examiner believes these to be distinct variants of each other, the applicant will be required to elect one design to pursue in the application. Thereafter, the non-elected design may be pursued in a divisional application.
One drawback of filing an application with multiple embodiments is the cost associated with preparing additional drawings. Furthermore, once the parent application is issued, all non-elected designs will be in the public domain unless a divisional application is filed. The benefit of filing an application with multiple embodiments is that many versions of the claimed design may be captured by one application. This application would have a single filing, examination, search, and issue fee.
The description of the drawings must include a claim, for example: “I/We claim the ornamental features of (name of the article), as shown and described.” As noted above, the figures are the claims in a design patent.
Although the goal of this blog series is to discuss design patent application preparation and filing, it would be remiss to not touch on prosecution. Design patent application prosecution is a streamlined process compared to utility patent application prosecution. That is, although design patent applications are examined under the same rules as utility patent applications – patentable subject matter under 35 U.S.C. §171 (35 U.S.C. §101 for utility patent applications), novelty under 35 U.S.C. §102, obviousness under 35 U.S.C. §103, and definiteness under 35 U.S.C. §112 – substantive rejections under novelty and obviousness rationales are less common. The most common rejection an applicant will encounter will relate to drawing quality and completeness.
According to USPTO data from February 2019, design patent applications have an 84% allowance rate. Further, design patent applications have an average first office action receipt date of 13.8 months from filing, and a total average prosecution length of about 20.4 months. In contrast, utility patent applications have an average first office action receipt date of 16.4 months after filing, with a total prosecution length of about 24 months. The total length of utility patent prosecution is often greater because multiple rejections are that much more common.
Further, design patent applicants can take advantage of the USPTO’s design patent “rocket docket,” which on average yields a first office action in less than 1.35 months from filing (see MPEP 1504.30 and 37 CFR 1.155). Although appealing, expediting a design patent application examination using this procedure requires a pre-examination search, which many practitioners/applicants are hesitant to submit.
The term of U.S. design patents was 14 years, but the term of design patents stemming from applications filed after May 13, 2015, is 15 years. Design patents, unlike utility patents, do not require a periodic maintenance fee.
The relative ease of design patent application preparation and speed of which applications are prosecuted should make them very attractive to most inventors. In many circumstances, it is possible and recommended to pursue both utility and design patents to protect novel features of a product or device.
Furthermore, the savvy practitioner will often use design patents, along with utility patents, trademarks, trade dress, and copyrights, to build intellectual property protections around the client’s product so the client retains the full value of their invention or contribution to the marketplace. While each of these legal vehicles is designed to protect specific aspects of the intellectual property associated with a product, some overlap will often occur, which can only serve to enhance the overall protections available to the client.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.