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How and Why to Get a Design Patent

Posted by Isabel Fox | Nov 23, 2021 | 0 Comments

How to Obtain a Design Patent

The first step to getting a U.S. design patent is to file a design application with the USPTO, satisfying the requirements set forth by the United States Code (see 35 U.S.C §171). This can be done by the inventor herself “sua sponte,” but it is advised to have a patent attorney or patent agent handle the filing, because we know and understand the governing laws regarding patent filings and the rules and regulations set forth by the Manual of Patent Examining Procedure (MPEP). Filing an application along with the filing fee grants the inventor a filing date and an application number, and then the application is placed in the hands of an examiner at the USPTO.

The examiner will evaluate the application and look for prior art (e.g., previous patents, non-patent literature, etc.) that renders the design application non-novel or obvious. The examiner will also look for issues with the form of the application (i.e., making sure all the components of the application are present, the words used are proper, the drawings are up to standard, etc.). If the examiner does not find any issue with the application, they may immediately submit a notice of allowance, at which point the inventor can pay the issue fee and obtain her patent.

If the examiner does find any issues of non-novelty or obviousness, then they may submit a rejection. If there are any issues with the form of the application, they may submit an objection. Either way, this first action issued by the examiner is considered a non-final office action, and the inventor has the right to respond to it. It should be noted that examiners may also submit actions that combine rejection(s) and objection(s), requiring a more complex response.

Because a design application includes a single claim that refers to the drawings within the application, and because no new drawings are usually allowed to be submitted after the application is filed, the response to a rejection will generally be an argument pointing out why the examiner's reasoning is flawed. If the examiner responded with only objections, then the inventor can amend the application to follow the rules of the MPEP that the examiner has pointed out and resubmit the application for reconsideration. This may include submitting revised drawings to fix issues such as distortion of the original drawings.

If the examiner finds the Applicant's arguments to the rejections valid, and if the objections have been resolved, the examiner may submit a notice of allowance. However, if, after the submission for reconsideration, the examiner still does not allow the application to issue, they may submit a final office action to the inventor. This final office action means that prosecution is complete from the examiner's standpoint, and the application is now approaching abandonment. Because design patent applications are not eligible for a Request for Continued Examination (RCE), there are only two options for the inventor to avoid abandonment after receiving a final office action.

Should the inventor still find the arguments of the examiner to be insufficient to reject the design patent application, one option is to file an appeal with the Patent Trial and Appeal Board (PTAB). Here, the inventor will make her arguments, the examiner will provide their counter arguments, and the PTAB will decide whether the subject matter is in fact patentable.

The second option is to file a brand-new application that claims the benefit of the filing date of the first application prior to the first application going abandoned. The inventor has six (6) months to respond to any actions before the application goes abandoned (the examiner may shorten this time frame, but this time frame can be extended to six (6) months with the payment of fees for extension of time).

Included in the design patent application, and perhaps the most important section, are the drawings. Any part of the drawing that is considered a part of the invention to be protected must be drawn with non-broken lines. Broken lines are only used for environmental images or parts that are not being claimed. For example, an application claiming a keychain may include one or more drawings with a key coupled to the keychain. In this one (or more) drawing, the key itself would be drawn with even broken lines to indicate that the key is not part of the claimed design. In addition, shading may be used in design drawings to represent depth and contour of the claimed design. It is recommended to show the claimed design from as many angles as possible in order to fully describe it, including exploded and cross-sectional views.

Why You Should Consider Getting a Design Patent

Remember, a design patent is an exclusionary right. Having a design patent that says you own the rights to a specific design may open some lucrative opportunities, including being the sole seller of your invention or licensing the design. If your design becomes popular in the market, other people may well try to achieve some financial gain from your hard work. Without a patent protecting your design, there is little you can do about people stealing your design.

With a design patent in hand, you can stop copycats through legal action. This legal action may involve a cease-and-desist letter(s) and/or an actual lawsuit(s) to recoup damages from lost sales. In the event you bring someone infringing your patented design to court, you are required to prove to the court that an ordinary observer could be deceived into believing the infringing product and your product are the same thing. The drawings within your design patent are key elements of this proof, as they will clearly show the design you have protected, and can be compared to the infringing product to demonstrate how the infringing party is copying your design.

In addition to enforcing your patent rights against infringers, you could license your design patent to others. If you do not have the means of production to meet the demand for your design, other manufacturers may be interested in purchasing the right to use your design patent and produce the design themselves. This could be structured through a lump sum for the use of the design, or royalties based on the quantity of products sold using your intellectual property.

How We Can Help

Gallium Law has significant experience in drafting design applications, prosecuting them before the USPTO, and enforcing design patents. We also have experience licensing design patent rights. We would be happy to assist you in strengthening your patent portfolio and increasing the value of your business. Please call us at 651-256-9480 or fill out this Contact Form to speak with us before it's too late.

*The information provided in this article is not legal advice and should not be relied on as such. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.

About the Author

Isabel Fox

Isabel Fox is a registered patent agent and has been with Gallium Law since 2018. Her practice largely revolves around utility and design patent prosecution; including conducting patent landscape searches, drafting patent applications, and responding to Office Actions issued by the USPTO...


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