According to 35 U.S.C. 171, a design patent protects the way an article looks. In a design patent application, the subject matter claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. A design patent application includes only one claim, and restriction between plural, distinct inventions is mandatory. The term of a design patent is 14 years measured from the date of grant of the patent.
ELEMENTS OF A DESIGN PATENT APPLICATION
A design patent application has essentially the same elements required in a utility patent application.
The elements of the design patent application, if applicable, should appear in the following order (37 CFR 1.154):
- Application transmittal form
- Fee transmittal form
- Application data sheet
- Specification
- Drawings
- Executed oath or declaration
The Specification should include:
- Preamble with names of applicant(s), title of the invention, brief description of the nature and intended use of the article
- Cross-reference to related applications, unless included in the application data sheet
- Statement regarding federal funding
- Description of figures
- Feature description, if any
- A single claim
Examination of a Design Patent application
Design patent application prosecution is much simpler than that of a utility patent application. Design patent applications need to satisfy the requirements of ornamentality, novelty, and unobviousness to qualify for a design patent. The novelty and unobviousness are determined by the examiner in charge of the application, by conducting a search in the appropriate design and mechanical classes. If the examiner determines that the claim does not meet those requirements, he/she will then issue a first office action summarizing all the rejections to which the applicant, via the attorney, needs to respond with appropriate amendments and arguments. Generally, the examiner tells the applicant the kind of changes that need to be made. To be patentable, the appearance of the design as a whole, must be unobvious to a designer of ordinary skill over the cited references. If the design is not significantly different over prior art, then the application should be abandoned. If the examiner considers the design to be obvious, then arguments can be made pointing out the differences between the instant design and prior art, and their importance and significance from an ornamental point of view.
Once a design patent application is allowed, OIPA/WSURF must pay an issue fee before the patent can be issued. There is no maintenance fee for design patents, which are valid for 14 years from the date of issue.
Comparison between utility and design patents
In general, a "utility patent" protects the utilitarian aspect of an article while a "design patent" protects the ornamental aspects, including its shape/configuration or surface ornamentation. It is possible to get both utility and design patents on an article if the invention resides both in its utility and ornamental appearance. The term of a design patent is shorter (14 years from grant date) compared to that of a utility patent (20 years from the earliest filing date). Some of the other differences include the absence of maintenance fee requirement, and no provision for filing an international application naming various countries. Design patents also cannot claim the benefit of a provisional application under 35 U.S.C. 119(e). Utility patent applications can obtain foreign priority under 35 U.S.C. 119(a)-(d) for up to one year after the first filing in any country subscribing to the Paris Convention. This period is only six months for design patent applications
Spork Patent
"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."
For more information, please visit the USPTO.
