CHAPTER 14 DESIGN PATENTS ornamental and decorative …€¦ · The drawings should use sufficient...

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CHAPTER 14 DESIGN PATENTS Ch.14/A: Design Patent Applications A design patent protects the ornamental and decorative elements of a design. It does not protect the functional element. Functional elements are protected by a utility patent. For instance, the Winged Victory hood ornament of a Rolls Royce would be a proper subject for a design patent – it has no function but to act as a decoration. On the other hand, the anti-lock braking system would be the subject of a utility patent. In some cases, both a design and a utility patent may be obtained on an article if invention resides both in its ornamental appearance and its utility. The door handle on the Rolls Royce is a good example. It is obviously functional, but it may also have a special and unique decorative look and shape which has no function in itself and, therefore, may be protected by a design patent. For more information, see MPEP 1502.01. The USPTO has stated that computer icons are valid subject matter for design patent protection. Term of design patent: The term of a design patent is 15 years from the date of grant for all design applications filed on or after May 13, 2015. For applications filed before May 13, 2015, the term is 14 years. The rules for filing and examination of design patent applications can be found in 37 CFR 1.151 - 155 and in Chapter 1500 of the MPEP. Priority: A design patent application (unlike a utility or plant patent application) cannot claim priority from a provisional patent application under 35 USC 119(e). A design patent application may, however, claim priority to a foreign application under 35 USC 119(a)-(d). But in order to obtain the benefit of an earlier foreign filing date, a United States design application must be filed within six months (not 12 months) of the earliest date on which any foreign application for the same design was filed. See MPEP 1504.10. Design applications are a great deal simpler in their content than utility applications and generally consist of only about a page of text together with one or more drawings. To see a typical design patent, visit the USPTO website and search the patent database for the phrase, "my design." You will find hundreds of design patents, and they all have the same general format. A design application is very brief in content. It basically contains one claim that is generally phrased, "The ornamental design for a __________, as shown and described." This claim is accompanied by a number of drawings that show the design from various angles.


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A representative example of the text of the specification of a design patent application is as follows: I, Sam Smith, have invented a new design for a telephone handset as set forth in the following specification:

FIG. 1 is a perspective view of a telephone handset depicting my design; FIG. 2 is a left side elevation view thereof; FIG. 3 is a right side elevation view thereof; FIG. 4 is a rear view thereof; and FIG. 5 is a top plan view thereof.

I claim: The ornamental design for a telephone handset, as shown and described. Ch.14/B: Elements of a Design Application A Design application requires filing the following elements: (1) A Specification containing

(a) preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied; (b) cross-reference to related applications (if any); (c) statement of federally sponsored research (if any - usually not for designs); (d) description of the figure(s) of the drawing; (e) a single claim; and (f) drawings or photographs.

(2) Executed oath or declaration. (3) Application Data Sheet (essential if claiming priority to previous application). (4) The filing fee (37CFR§1.16f). The Preamble The Preamble should state the name of the applicant and the title of the design and give a brief description of the nature and intended use of the article in which the design is embodied. All information contained in the preamble will be printed on the patent, should the claimed design be deemed patentable. The Title The title of the design must be clear and descriptive and use the ordinary words by which the design would be described. Do not use fictitious marketing names. So "telephone handset" would be appropriate, but "The Mark V Boogie Phone" would not. Cross-Reference to Related Applications Usually there will be no related applications. Clearly identify any other US or foreign application that is related to the present design application. If you are claiming priority to a foreign application, identify it by application number(s), date filed, name of applicant, and title. If you are claiming priority from a previous application, you need to provide


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the priority information in the declaration, as well. Remember to always file an Application Data Sheet, which is mandatory to claim priority. If you fail to claim priority you generally have four months to correctly claim it. See 37 CFR 1.55 “Claim for foreign priority.” Statement of Federally Sponsored Research Usually there will be no federal sponsorship for a design patent application. If there is, you need to add the text, “This design was made with government support under [identify contract] awarded by [identify the federal agency]. The government has certain rights in the invention." The Figure Descriptions The figure descriptions indicate what each view of the drawings represents, i.e., front elevation, top plan, perspective view, etc. In addition to the figure descriptions, statements such as the following are permissible in the specification: "the right side elevation view is a mirror image of the left side." A Single Claim A design patent application may include only a single claim. The claim generally uses this form: "The ornamental design for ______ as shown and described." Drawings or Black and White Photographs The drawing(s) is/are the most important element of the design application. Every design application must include either a drawing or a black and white photograph of the claimed design. The drawing or photograph must be clear and complete, and nothing regarding the design sought to be patented must be left to conjecture (see 37 CFR §1.84b1 and §1.152).

The drawings or photographs should contain a sufficient number of views to completely disclose the appearance of the claimed design – front, rear, right, and left sides, top and


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bottom. If certain parts may be placed in alternative positions, separate drawings may be used (see the laptop above). Exploded views can be provided to show separated elements (the figure below is from the USPTO). The exploded/separated elements must be shown delineated with a bracket as below.

Indeterminate lengths may be shown by “breaking” a section and using a curly bracket to indicate that the precise length is not claimed elements (the figure below is from the USPTO).


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Specific materials can be indicated by using particular forms of standard markings and shading. It is not required that these particular conventions be used. In fact, other standard and commonly used symbols will be acceptable provided they are clearly understood, are adequately identified in the specification as filed, and do not create confusion with other symbols used in patent drawings. The figure below is from the USPTO.


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The drawings should use sufficient shading to show contour and shape but should not use solid black shading (see 35 USC 132 and 37 CFR § 1.121, at the end of this guide). The two types of shading commonly employed in design patent application drawings are straight-line surface shading and stippling (but they should not be used together on the same surface). Broken lines are used to represent any structure that is not part of the claimed design but is considered necessary to show the environment in which the design is used. For example, with a hood ornament, the hood of the car would be drawn using broken lines. Go the USPTO website and search the patent database for "hood ornament." You will find several examples of the use of broken lines. Objects visible behind transparent surfaces should be shown in light, full lines, not broken lines. Alternate positions of a design must be shown in separate views. Multiple embodiments of a single concept may be filed in one design application, so long as their appearance and shape are similar.


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Color Drawings or Color Photographs The USPTO will accept color drawings or photographs in design patent applications. Before 13 May 2015 (ratification of the Hague agreement), you needed to submit a petition and fees, but this is no longer required. The Oath or Declaration The oath or declaration is of the standard type (37 CFR §1.63). Application Data Sheet Not only is it is always a good idea to use an ADS, it is essential if claiming priority to previous application. Ch.14/C: Examination of a design application Examination is similar to (but less complicated than) examination of a utility application. First, the application is checked for compliance with formalities, ensuring completeness of the drawing disclosure. Then the claimed design is examined for novelty and non-obviousness. An Office Action will be sent to the applicant allowing or rejecting the claimed design. The applicant may respond in the normal way, arguing that the design is patentable over the prior art designs. As with utility applications, extensions of time for reply may be obtained, except when responding to a Notice of Allowance. Examination ends in allowance or abandonment. Continuations are allowed in the usual way with design applications, but RCEs are not used. Instead, a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) may be filed (see Chapter 6). Design patents are subject to an additional offensiveness hurdle. Design applications that disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those that include caricatures or depictions, will be rejected as non-statutory subject matter (35 USC 171; MPEP § 608). Although multiple embodiments of a single concept may be filed in one design application, normal restriction practice still applies (MPEP 1504.05), and if the examiner determines that the application contains more than one distinct design, he/she may require the applicant to elect to prosecute a single design. Design applications are not published before allowance (unlike utility applications). Expedited examination Because the commercial life span of a design may be short, expedited examination (under 37 CFR 1.155) can be requested for a design application. This expedited procedure became effective on September 8, 2000, and is available to all design applicants who first conduct a prior art search and file a request for expedited examination together with the fee specified in 37 CFR 1.17(k).


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To qualify for expedited examination, the following conditions must be met: (1) The application must include formal drawings in compliance with all the drawing rules (37 CFR § 1.84). (2) The applicant must have conducted a pre-examination search. (3) The applicant must file a request for expedited examination including

(i) the fee set forth in § 1.17(k) and (ii) a statement that a pre-examination search was conducted. The statement must indicate the field of search and include an Information Disclosure Statement in compliance with 37 CFR § 1.98.

Ch.14/D: Filing a Design Application The design application can be filed in the usual way using Priority Mail Express or by EFS-Web. Design patent applications have their own transmittal form (PTO/SB/18) and use the generic fee transmittal form PTO/SB/17. Fill out PTO/SB/18 as follows: a) Fill out the information at the top: docket number, first named inventor, title of

invention, and Priority Mail Express number (if appropriate). b) Check box 1 for the fee transmittal form (PTO/SB/17). c) Check box 2 if claiming Small Entity status. d) Check box 3 and fill in the number of pages; use the list as a checklist. e) Check box 4 if you are submitting drawings, and fill in the number of pages. f) Check the appropriate box in section 5 – usually box (a) if you are submitting a newly

executed declaration. g) Check box 6 only if you are submitting an application data sheet. h) Check boxes 7 – 14 if you are submitting additional papers, such as an assignment. i) Check box 15 and write in “postcard” (if appropriate). j) Section 16 is used if the application is a Continuation, a Divisional or a CIP. Check the

appropriate box and fill in the examiner‟s name and art unit for the prior application. k) Fill in the correspondence information in the lower box; fill in the attorney‟s name and

the registration number and date. l) Complete the generic fee transmittal (PTO/SB/17) in the usual way, authorizing

payment from deposit account, if appropriate. The documents required to file a design patent application include

- Design Patent Application Transmittal (PTO/AIA/18) - Specification with drawings or photographs - Oath or declaration (see § 1.153(b)) - Filing fee (37 CFR §1.16(f)) - Fee Transmittal (PTO/SB/17) - ADS

Your application may also include other documents, such as - assignment(s),


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- Assignment Recordation Form Cover Sheet (Form PTO-1595) and fee, - power of attorney, - IDS and any IDS references (not US patents), - certified priority documents (if required), - Request for Expedited Examination (PTO/SB/27), and/or

- application data sheet (if desired or required for non-inventor applicant) -Return Receipt Postcard if filing by mail.

Once all the required parts of the application have been assembled, the application should be filed using EFS-Web, or it can be mailed by Priority Mail Express to COMMISSIONER FOR PATENTS, P.O. BOX 1450, ALEXANDRIA, VA 22313-1450.


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Example: Design Patent Application Transmittal (PTO/AIA/18)


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Example: Design Patent Application


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Filing a design application using EFS-Web Filing a design patent application using EFS-Web is quick and easy with the same EFS-Web interface used for filing utility and provisional patent applications. For a complete walkthrough with images, please see Chapter 12/C. Log in to the EFS-Web system on USPTO.gov. After choosing the practitioner for whom you are working, you will be sent to the Certification screen. Under Main Functions you can select New Application/proceeding. Select application type. In this case, select New Application and Design. Then select the type of design application you will be filing. Usually it will be Nonprovisional Application under 35 USC 171. Then click the Continue button. Fill in the application data and customer information. Use your customer number if you have one, or provide a correspondence address if you do not. Do not forget to type in the docket number. Then go to the next screen. Attach the documents to be filed. All documents must be in PDF. Documents to be attached must be named using the proper naming convention, e.g., Design_file_001.pdf. If you fail to do so, an error message will be displayed. The documents to be submitted must be in the correct format and must be named using the proper naming convention. If they are not, an error message will be displayed and the document must be removed and replaced by one of the correct type. All documents must be in PDF or TXT format. In almost all cases, PDF documents are used. File names cannot include spaces. Examples of valid file names include the following: Patent_file_001.pdf client12345.pdf lettersorNUMBERS.txt 123_abcde_z.zip Then click Upload and Validate The files will be uploaded and progress will be shown. On the following Validation screen, you will see the status for each attached file. You should review any Warning or Error, and amend or remove the document as required. You do not necessarily have to delete a file with a Warning, for example, if the document is not an official USPTO supplied form, you can still file it, but you should check to make sure there is no serious problem. You cannot file with a red triangle Error, and you will have to remove/fix/replace the file as needed.


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When all the files pass validation (no red triangles), continue to the Fee Calculator page. Make sure you select the right fee status: Regular Undiscounted, Small Entity or Micro Entity. Then select the fees required. For a new nonprovisional application, you will usually select at least Filing, Search and Exam fees. You may have others. The system will calculate the total for you. On the next page, you will have a last chance to review all the application information before you file it. Review it very carefully. Click on document links if you want to review an attached document. Alternatively, at this stage, you can cancel, or save the documents for submission later. If actually filing, then SUBMIT the application. Click only once. All you have to do now is pay the fees. Alternatively, at this stage, you can cancel, or save the documents for submission later. Once filed, you will be automatically taken to the USPTO Financial Manager system to pay the fees using stored payment methods such as a USPTO Deposit Account, a Credit Card or Electronic Funds Transfer. Review the payment order details and the total fee due for filing the application. Select the payment method (usually deposit account) and any safety net Fee Preauthorization(s) desired, and SUBMIT PAYMENT. As soon as payment has been made, a screen will appear telling you that the submission has been successfully filed and the fees have been paid. A link to an Electronic Acknowledgement Receipt will be provided. This will show all the application data including the new application number and confirmation number that you will need to access the file. It will also show the date and time of filing. You can view, save, print, or email this receipt. You will not receive a confirmation via email that the USPTO has received your submission. Within an hour (usually sooner) you can access the filing in Private PAIR to view your submission.

Ch.14/E: Prosecution of a Design Application Prosecution in a design application is often uncomplicated. Frequently you will receive a first action allowance or an Ex Parte Quale action (see Box 4 in the example below) telling you that the application is allowable except for certain formal matters that need to be corrected. In this case you will often be asked to supply new drawings or correct the description. If you find that you have made an error in the specification, you can file a preliminary amendment in the same way as you would with a utility patent, amending the specifications using the standard strikethrough and underline rules.


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Example: Design application Office Action

Once you receive a positive examination report, the process of concluding prosecution is the same as for any other patent application. You will receive a Notice of Allowance and Issue Fee(s) Due (PTOL-85), which you need to fill out and return with the required issue fee. The term of a design patent is 15 years from the date of issue.


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First page of a design patent:

Ch.14/F: The Hague Union treaty – International Design Applications On May 13, 2015, the US implemented the Hague Union treaty for design patents, and from that date US applicants can file a single international design application directly with the USPTO to be registered and/or examined in about 77 countries. Upon filing, these international design applications will also be available for viewing in Private PAIR. In addition, all applications filed under the Hague Agreement will be published and will be entitled to provisional rights, similar to published utility patent applications.


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The Hague Union provides an easy-to-use international design application that can contain up to 100 designs in a single application. We recommend filing online using the E-Filing Interface system. An international design application satisfying the requirements of the Hague Agreement for international registration will be given an international registration number by WIPO, which begins with the series code DM/nnnnnn and will be published by WIPO. International design applications filed though the USPTO are assigned a 35-series application number (35/nnn,nnn). PAIR users can search for a 35-series application by using the Application Number search found under the Search for Application section in PAIR. In addition, PAIR users can search for a 35-series application corresponding to a published international design application designating the United States by the international registration number using the International Design Registration Number search found under the Search for Application section in PAIR. For more information see http://www.wipo.int/hague/en/. All the forms that you need are here: http://www.wipo.int/hague/en/forms/. Video tutorials: http://www.wipo.int/hague/en/how_to/efiling_tutorial/index.html

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