Design patents, in the United States, can be used to secure valuable intellectual property rights to protect an industrial design for visual ornamental characteristics embodied in a manufactured item.
In the United States, a design patent application must be submitted, examined by the USPTO, and successfully prosecuted before the applicant can obtain a design patent.
The USPTO will not publish a design patent application. The public gains access to the patented design only upon issuance of the patent.
The U.S. design patents have a term of 15 years from the date of issue.
Contents
1. Introduction of the U.S. Design Patents
2. Filing Process of a U.S. Design Patent Application
3. Prosecution and Examination of a U.S. Design Application
4. Review of a U.S. Design Patent
5. Enforcement of a U.S. Design Patent
6. Remedies of infringement on a U.S. Design Patent
1. Introduction of the U.S. Design Patents
The USPTO classifies design patents into thirty-three classes, including “apparel and haberdashery,” “tools and hardware,” and “games, toys, and sporting goods.”
The design patents can be obtained and granted to a design application filed in the U.S., for “any new, original and ornamental” design of a manufactured article through examination of the United States Patent and Trademark Office (USPTO).
The U.S. design patent will only protect its appearance, not any structural or utilitarian features. “A claimed design must be “primarily ornamental,” meaning that the overall appearance must not be dictated solely by function. However, both design and utility patents can be procured if both the utility and the ornamental appearance are patentable.
The U.S. design patents may not claim the benefit of a provisional application, but may claim the benefit of an earlier-filed non-provisional design or utility application, provided there is sufficient support in the priority application.
2. Filing Process of a U.S. Design Patent Application
Source: https://www.uspto.gov/patents/initiatives/uspto-patent-application-initiatives-timeline
In the U.S. design patent application, it should also include shading to show the character or contour of the surfaces represented. In design patent applications, surface shading is perhaps more common in U.S. than in other countries.
Alternatively, broken lines of uneven length (i.e., dashed-dot lines) are used to define boundaries that mark where a boundary does not exist in reality, but it is understood that the claimed design extends to the boundary, but excludes the boundary line itself.
Broken lines of even length (i.e., dashed lines) are used to define environmental structure that are elements related to the claimed design but do not form a part of the claimed design.
The scope of the claim is primarily conveyed in the lines and shading of the figures. Lines can be represented in either solid or broken form. Solid lines constitute the claimed design, while broken lines (i.e., dashed or dashed-dot lines) are usually included to show visible environmental structure or to define boundaries.
Where a view is not seen in ordinary use (such as the bottom of a large object, like a refrigerator or car), the application may omit this view, provided that an appropriate explanation is included in the specification.
When two views are the same (or mirror images), such as side views, only one view needs to be depicted and the specification may explain that the other view is, for example, a mirror image.
In practice, a design patent application usually includes a depiction of the top, bottom, front, rear, left and right sides, and perspective views. However, in some instances, additional views may be necessary to fully disclose the design. Even if the applicant need not claim the entire article of manufacture, the whole article also must be depicted.
Drawings are the focal point of the design patent application process. The application must contain sufficient figures of various views to constitute complete disclosure of the appearance of the design.
If a design application contains more than one inventive concept, the USPTO will require the applicant to choose (“elect”) one concept and cancel the others. The unelected concepts may be pursued in divisional applications, which must be filed and prosecuted separately, and there are certain legal consequences if the applicant chooses not to pursue all the concepts.
Design patent applications recite only one claim. But, the specification may include more than one alternative embodiment if the embodiments involve a single inventive concept.
Either the inventors or an assignee of the patent application may serve as the applicant.
Generally, the design application must include a title, figures, a specification with a brief description of the figures, one claim, a list of all inventors, and a signed declaration of the inventors. U.S. law requires that the inventors be named on the application.
If design patent applications are filed with the USPTO, a design patent can be granted under 35 U.S.C. § 171 for visual ornamental characteristics embodied in a commercial product.
The U.S. has changed from a first-to-invent to a first-inventor-to-file system in 2013. Any commercial use of a product’s design prior to any statutory grace period and prior to filing can lead to a bar on patenting. That is, a design may be barred if it was patented, described in a printed publication or in public use, on sale, or otherwise available to the public, anywhere in the world, before the effective filing date of the application.
3. Prosecution and Examination of a U.S. Design Application
Filing expenses related to the application include preparation of drawings or photographs, representative’s fees in preparing the application, and government filing fees.
If the examiner allows the claim, the allowed claim issues as a design patent, after the payment of an issue fee. On average, design patents issue about fourteen months from filing.
If the examiner issues a final rejection, applicants may appeal to the USPTO Patent and Trial Appeals Board and eventually the U.S. Court of Appeals for the Federal Circuit.
A first office action will be mailed, on average, about ten months after filing. Depending on the type of action, the period for response may be one to six months.
New matter is anything added to the claim, drawings, or specification that was neither shown nor reasonably conveyed in the original application. If new matter is added to the application during prosecution, the application will not be entitled to the filing date for priority purposes, and any intervening prior art between the date of filing and the date that the new matter was added will need to be considered.
Once the application is examined, the USPTO will issue one or a series of office actions detailing additional information required and/or substantive issues affecting patentability. During this prosecution phase of the application process, the applicant may argue against the examiner’s reasoning and usually amend the application to overcome the cited issues affecting patentability. Amendments to the application’s drawings are limited in certain ways to avoid from an addition of “new matter”.
Once filed, following initial examination, the examiner will review the application for substantive compliance with U.S. law, including novelty under 35 U.S.C. § 102, non-obviousness (inventive steps) under 35 U.S.C. § 103, and certain disclosure and clarity requirements under 35 U.S.C. § 112. If the USPTO determines that an application contains more than one design, it will require the applicant to elect one design. Applicants may file divisional applications on the unelected designs.
On average, the timeline between filing for a design patent and the issuing of that patent is about fourteen months.
4. Review of a U.S. Design Patent
Applicants may request a certificate of correction to correct clerical or minor mistakes made through the fault of the patent office or through the fault of the applicant, provided that the mistake occurred in good faith.
For more substantive corrections, the patent office can reissue a patent with corrected drawings or a corrected specification.
Third parties may also request that the patent office review a patent for patentability through what is known as an ex parte reexamination. Third parties may also request inter partes review, which is an adversarial proceeding limited to asserting that identified patents or printed publications render the patent invalid.
Post-grant review is an adversarial proceeding with fewer limitations on invalidity grounds that can be asserted.
5. Enforcement of a U.S. Design Patent
In the United States, federal law governs design patent infringement actions. An action for enforcement of a design patent must be filed in one of the ninety-four federal U.S. district courts distributed geographically throughout the country.
Appeals for design patent infringement decisions from either type of forum are filed in the U.S. Court of Appeals for Federal Circuit. Further appeals are submitted to the U.S. Supreme Court.
6. Remedies of infringement on a U.S. Design Patent
If a U.S. design patent is infringed, the patent owner has some powerful remedies such as seeking total profits from the infringing party or an injunction to stop the infringing party from manufacturing and selling products using the infringing design.
Patented designs are infringed by an accused product when the ordinary observer would find the two substantially the same, such that the observer would be deceived into purchasing the accused product supposing it to be the patented design.
If these elements are proven in court, a successful litigant may be entitled to preliminary injunctions, permanent injunctions, monetary damages, and, in exceptional cases, attorneys’ fees and costs.
The test for design patent infringement in the United States is the “ordinary observer test.” The test is conducted from the perspective of the ordinary observer who gives such attention as the purchaser usually gives, depending on the cost of the article, and is deemed to be familiar with the similar prior art designs.