Best Practices for Design Patents- Conclusion

By Debby Winters

We have discussed various aspects of design patents in this series of blog posts. 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 in this series should be considered when preparing an application for an ornamental design. However, you should always consult with a licensed patent attorney before moving forward with your application. We would be happy to serve as your patent attorney. Good luck!

Best Practices for Design Patents- Include Additional Embodiments

By Debby Winters

To continue our series of blog posts on design patents, in this post we will discuss including additional embodiments.  Similar concepts with slightly different modifications, such as certain features being shown in solid and broken lines, are considered additional embodiments and could be filed in the same application. The potential outcome of including additional embodiments in a design application that does not exist in a utility application is the potential for receiving a restriction requirement.  The Patent Office may or may not issue a restriction requirement, depending on how closely related the designs are. The subjectivity will also depend upon the particular Examiner assigned to your application. 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 that 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.

Best Practices for Design Patents- Use of Solid vs. Broken (Phantom) Lines

By Debby Winters

As we already discussed in this series of blog posts about design patents, 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. 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.

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. 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. Again, the importance of using an experienced draftsperson cannot be overemphasized.

Best Practices for Design Patents- Figure Views Should be Consistent

By Debby Winters

Many rejections received by applicants during the prosecution of a design patent application involve inconsistencies in the drawings. Design patents require a sufficient number of views to completely disclose the appearance of the invention. 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. This is one reason it is critical to have a draftsperson who is experienced at design patent drawings.

Best Practices for Design Patents-Drawing Quality is Key

By Debby Winters

As mentioned last time, 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 essential. I often have engineers ask if they can prepare their own drawings. I allow this with utility applications but I required an experienced design patent draftsperson who has experience with design patents.

Best Practices for Design Patents- Know the Subject Matter Qualifications

By Debby Winters

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.

Additionally, any time neither a utility or design patent are appropriate, always consider whether trade dress is appropriate.

Best Practices for Design Patents

By Debby Winters

The first examination to undertake is to understand what a design patent is and how it differs from a utility patent.

U.S. design patents cover the ornamental design of an object having practical utility. The subject matter claimed is the design embodied in or applied to the article and not the article itself.  In other words, 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. 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.

I am often asked whether a client should seek a design or a utility patent. While it depends on the invention, a U.S. design patent provides a number of advantages when compared to a U.S. utility patent. First, design patents have a higher allowance rate. Second, design patents have a faster time to final resolution. 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.

The five areas for our discussion on best practices will focus around the following:

  1. Know the Subject Matter Qualifications
  2. Drawing Quality is Key
  3. Figure Views Should be Consistent
  4. Use of Solid vs. Broken (Phantom) Lines
  5. Include Additional Embodiments

We will discuss each in a separate blog post starting with the first so keep reading!