This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent. Here we highlight takeaways from a USPTO Inventor Info Webinar (the “Webinar”) held on September 21, 2017, that focused on design patent drawing requirements, as well as on other issues on design patents. The Webinar’s slides can be found here.
As a brief recap, 35 U.S.C. § 171 states that “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.” Thus, the statute requires that a design be for an article (i.e., rather than a disembodied design, a design per se) and that the article have one or both of some surface ornamentation and configuration that differs this article from others.
Unlike in a utility patent in which multiple claims are allowed, only one claim is permitted in a design patent. Also, while in a utility patent drawings support the claims, in a design patent it is the drawings that “describe” the article and thus act as a “written description.” Moreover, an option of claiming priority to a provisional application does not exist for a design patent application. As emphasized at the Webinar, in the design patent realm, you get what you submit, meaning that an applicant should file the best drawings possible. No further changes, with the exception of certain amendments, are allowed after the application is filed. A design application can be a continuation of a utility application, though the parent application in this case must include the same drawings as those included in the child design application. If the drawings are not adequately supported by the parent, the applicant will be required to specify that the child design application is a continuation-in-part, rather than a continuation, of its utility parent.
An entire article or part of an article can be protected by a design patent. Although separate parts of an article can be illustrated (an example in the Webinar was a teapot, an insert, and a lid), the article as a whole, as a unit or assembly, will be protected rather than its separate parts. Variants of a design may be included in the same application when these differences are “obvious” in view of case law or the prior art of record. It was noted in the Webinar that portions of an article shown separately, along with the article, do not receive separate protection. To protect various parts of an article, a good strategy is to build a design patent portfolio including multiple patents each protecting a portion of the article.
At the Webinar, it was rehashed that a design patent application has essentially the same elements of an application as those that a utility application must include. The specification describes each figure and includes a single claim. The language of the only claim is statutory and should include “a design” embodied in, applied to, or for (not “of”) a specific article. It is advisable to describe the drawings briefly, by simply stating what view is shown, and without unnecessary details. In this regard, it was noted that applicants often have lengthier description of the drawings than required, and they are then asked to amend such description. And, again, the importance of good quality drawings, which determine the scope of the design protection, cannot be overemphasized. All parts of the claimed design should be illustrated in the drawings, with enough detail to show what is claimed. A perspective view, although not required, often shows an article or its portion(s) in a way that other views may not provide.
Parts of an article that are not being claimed must be shown in broken lines. Broken (or dashed) lines can serve several purposes, such that they can illustrate an environment of the claimed article, an unclaimed portion of the claimed article, or surface boundary lines. Thus, if drawings have broken lines, the specification should describe the specific purpose of the illustrated broken lines. Complications can arise during prosecution if broken lines are not properly described.
In some cases, it may be possible to change during prosecution some of the solid lines, originally showing a claimed design, to broken lines, as long as this is supported by a written description – i.e., by the drawings and the claim. Amending broken lines to solid may also be possible (provided there is proper support) – e.g., in response to a prior art-based rejection, to change a scope of the claim by claiming “more.”
Another topic addressed during the Webinar concerned an Appendix that can be filed along with an application for a design patent. The Appendix can include any number and type of drawings (e.g., 3D drawings, photographs, etc.), as well as any description. However, the Appendix will not be treated as part of the disclosure, and its main use can be to add to the application information that was inadvertently omitted.
A nice “trivia” point noted at the Webinar, in response to a participant’s question, was that there is no limit on a size of a feature that can be protected. Thus, even tiny features, which may not be even visible to a naked eye, can be protected as long as they are enabled.
In conclusion, the Webinar emphasized the importance of having a well-developed strategy and good drawings before filing a design patent application or series of design patent applications.