Design Patent Prosecution: It’s Not the Same!

When you hear the terms “design patent” and “utility patent,” the tendency may be to focus on the “patent” part and assume that design patents are mostly like utility patents. While the two share some aspects, there are also many important differences. But, those intellectual property (IP) practitioners— and clients—who treat design patent applications the same as utility patent applications can often find themselves making mistakes and creating issues that may harm their overall IP portfolio and strategy.

In the United States, a single government agency, the U.S. Patent and Trademark Office (USPTO), examines and issues utility patents, design patents, and trademarks. But in many parts of the world this is not the case. For instance, in the European Union, the European Patent Office deals with utility patents, while the Office for Harmonization in the Internal Market (known as OHIM) registers designs and trademarks. As a result, designs and utility rights are treated much differently. Moreover, while in the United States, Title 35 contains provisions for both types of patents, there are many design-specific provisions that do not apply to utility patents. Finally, while some statutes, such as 35 U.S.C. § 112, which governs the specification, written description, and enablement, apply to both types of patents, the application of the requirements for clarity, for instance, apply quite differently in practice because utility patents generally deal in words, while design patents generally deal in drawings.

With this in mind, let’s take a look at the Top Ten Differences between design and utility patents and why those differences matter.

Difference #10: Design patents protect the ornamental aspects of an article, not how the article is used or works.

A design patent protects the ornamental aspects of an article of manufacture (i.e., an article with a function), while utility patents protect the way an article is used or works, or material that makes up the article. The fact that an article works in a new and nonobvious way—the standard for patentability in a utility application—is not relevant against a rejection in a design application. Instead, the overall visual impression of the article must be new and not an obvious variation of prior designs. Thus, those who are prosecuting design patent applications need to become fluent in the language of describing the way something looks and how that design is different from the way that a prior art design looks.

Difference #9: Deadlines come up faster in the design world.

Provisional applications are not available for design protection, so any U.S. filing must be a complete nonprovisional application. In addition, design applications are typically prepared after the production design has been frozen, which might be just before public disclosure, so the time to prepare the application is often limited. Further, in order to claim the benefit of a foreign priority application under the Paris Convention, 2 a design patent application must be filed in the United States within six months (as opposed to the usual twelve months available in utility patent applications). The same is true for filing foreign applications that claim priority to a design patent application first filed in the United States.

As such, it is usually best to have a fully formed filing strategy for a design patent application (including a plan for foreign filing) at the beginning of the process, as there is less time built in to decide whether to apply for protection in additional countries once the foreign filing clock starts.

Difference #8: Generally, U.S. design patent applications are not published.

U.S. design patent applications are not published if the application is filed directly with the USPTO. Moreover, if the application is not a divisional or continuation, then the prosecution history is not publicly available until (and if) the application issues. As a result, it is harder for third parties to keep tabs on the design patent applications of others until such applications issue as patents.

There is one instance in which a U.S. design patent application will publish: if the application is filed as an International Design Application (also known as an IDA) via the Hague Agreement Concerning the International Registration of Industrial Designs. 2 Under the Hague, the World Intellectual Property Office (WIPO) publishes the IDA about six months after the date of international registration. Generally, applicants may request deferment of publication of up to thirty months from the priority date (or from the filing date, if no priority is claimed). However, deferment of publication is not permitted if the IDA designates the United States (or any other Contracting Party that does not permit deferred publication). For more details on the Hague, check out last issue’s article.

Difference #7: Design patents only have one claim—so you might need more than one.

Whereas few practitioners would file a utility patent with only one claim, those filing design patent applications have no choice. Moreover, as noted below, restriction requirements are fairly common in design practice, so even if you start off with one application that matures into a patent, you may end up needing to file divisional applications to fully protect your design. Sophisticated applicants will often make careful use of portion claiming, which means only claiming a portion of the design by depicting those parts in solid lines and leaving other portions of the design unclaimed by using broken (or dashed) lines. Such techniques can help protect the innovative portions of a design and make it harder for copycats to “design around” your patent.

Difference #6: Since the claim is primarily the drawings, high-quality drawings are essential.

The single claim of a design patent always takes the same form: “The ornamental design for [the article which embodies the design or to which it is applied] as shown and described.” Because the claim relies so heavily on the drawings, those drawings should be clear, accurate, and include all the views needed to sufficiently show the design at the time of filing. Unlike utility filings where claim amendments are a regular part of the prosecution process, amendments in design applications, i.e., mainly to the drawings to, for example, correct lines or improve clarity, may be difficult to come by. Those who are prosecuting design patent applications should be on good terms with a competent draftsperson and be incredibly careful when filing drawings with the USPTO to make sure that drawing quality is not compromised in the process.

Difference #5: Restriction is required and commonplace.

As noted above, a design patent application may only have one claim; however, more than one embodiment of a design may be protected by that single claim. But be careful: those multiple embodiments must still cover a single inventive concept. If this is not the case, and the examiner determines that the claim is referencing more than one patentably distinct design, restriction will be required. Thus, divisional filings are also very common, leading to increased costs for applicants who may have to file multiple applications in order to fully protect a design. Also, the Court of Appeals for the Federal Circuit has held that the act of electing an embodiment triggers prosecution history estoppel, so it is important to carefully consider this possibility when planning your filing strategy.

Difference #4: Continued prosecution applications (CPAs) are the norm.

Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as an option in utility applications; instead, applicants regularly file requests for continued examination (RCE) to get another bite at the apple and continue prosecuting a utility patent application after a final action. But in design applications, RCEs are not allowed, so CPAs are still permitted.

Legally, a CPA is a new application—and its parent application must be abandoned in favor of the CPA—which requires an applicant to once again meet all of the formal requirements of a new application and pay the basic filing fee. Having to essentially file a new application in order to continue prosecution in a design application could be fertile ground for mistakes, especially in uploading appropriate drawings. If these issues can be avoided, however, a CPA is not much different from an RCE in practice. The CPA is usually assigned to the same examiner as the parent application, and prosecution continues from where it was left off.

Difference #3: Design patent term is based on the issue date. Thus, patent term adjustment is not necessary (or available).

When the term of utility patents was changed from seventeen years from issuance to twenty years from the filing date, the concept of patent term adjustment (PTA) was implemented to compensate applicants for any delays by the USPTO in handling a utility application. But this change did not apply for design patents.

For applications filed on or after December 18, 2013, the term of a design patent is fifteen years from the date of grant. This change—from a fourteen–year term—is another result of the implementation of the Hague Agreement. Thus, although delays in prosecution are never desirable, such delays in a design application will not affect a patent’s ultimate term. Further, U.S. design patents do not require maintenance fees to maintain the patent in force.

Difference #2: The USPTO charges less for design patents.

The following chart gives a snapshot of design patent application fees versus utility patent application fees as of September 2015. Design patent application fees are significantly cheaper; however, additional costs may be incurred in the form of expert draftsmen fees and because often more than one application is needed to adequately protect a design.

Difference #1: Hiring a practitioner who regularly handles design patent application prosecution makes a difference.

Although design patent prosecution may be less expensive than utility prosecution, it is true that hiring patent prosecution counsel who is not familiar with design practice can increase those costs significantly while that attorney gets up to speed on the differences between utility and design prosecution. Further, because of the shorter timelines and stricter application of some USPTO rules in design prosecution, hiring counsel who is not intimately familiar with design practice and procedures may end up costing more than additional money—it may cost valuable protection.

1 Paris Convention for the Protection of Industrial Property, March 20, 1883, available at http://www.wipo.int/treaties/en/text.jsp?file_id=288514.

2 Under the Patent Law Treaties Implementation Act (PLTIA) that took effect May 13, 2015, the United States joined the Hague Agreement.