Design Patent Application
In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself (Ex parte Cady, 1916 C.D. 62 (Comm’r Pat. 1916)). A new, original, and ornamental design for an article of manufacture refers to the design for an article, not the design of an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods. (In re Zahn, 617 F.2d 261 (CCPA 1980)). The design for an article consists of the visual characteristics embodied in or applied to an article.
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. Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.
Distinction Between Design and Utility Patents
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Utility and design patents can provide legally separate protection to the same article. However, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.
Some of the more common differences between design and utility patents:
- The term of a utility patent is 20 years measured from the U.S. filing date or from the earliest effective U.S. filing date, while the term of a design patent is 15 years measured from the date of grant (or 14 years if filed before May 13, 2015).
- Maintenance fees are required for utility patents, while no maintenance fees are required for design patents.
- Design patent applications include only a single claim, while utility patent applications can have multiple claims.
- Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications, while it is mandatory in design patent applications.
- An international application designating various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT), whereas an international design application designating various countries may be filed for design protection under the Hague Agreement.
- Foreign priority can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications.
- Utility patent applications may claim the benefit of a provisional application, whereas design patent applications may not.
- A Request for Continued Examination (RCE) may only be filed in utility and plant applications, while RCE is not available for design applications.
- Continued Prosecution Application (CPA) is only available for design applications (37 CFR 1.53(d)(1)).
- Utility patent applications are subject to application publication under, whereas design applications are not subject to application publication.
- Provisional applications are not available for design protection, so Design patent applications have to be complete. A design patent application must be filed in the United States within 6 months of a foreign application to claim a foreign priority.
- U.S. design patent applications are not published. If the application is not a divisional or continuation, then the prosecution history is not publicly available until the application issues. U.S. design patent application will publish if the application is filed as an International Design Application (IDA).
- Since the Design Patent claim is primarily the drawings, those drawings should be clear, accurate, and include all the views needed to sufficiently show the design at the time of filing.
- Restriction is common and is required.
- Continued prosecution applications (CPAs) are the norm. In design applications, Request for Continued Examinations are not allowed, so CPAs are still permitted. A CPA is a new application, which requires an applicant to once again meet all of the formal requirements of a new application and pay the basic filing fee.
- Design patent term adjustment is not necessary or available.
International Patent Application – PCT Patent Application
Elements of International Application
Any international application contains the following elements, mentioned in order: the request, the description, the claims, the abstract, the drawings, and the sequence listing part of the description if necessary.
In the International application, all the sheets are numbered in separate series of Arabic numerals, as follows:
- The first series for the request;
- The second series for the description, claims and abstract;
- The third series for the drawings (where applicable), and
- The further series for the sequence listing part of the description, if necessary.
The international application is written in a prescribed language, comply with the prescribed physical requirements and requirement of unity of invention and is subjected to the payment of the prescribed fees.
International, international-type and national search are carried by the same or different International Searching Authority or by a national Office. The applicant can indicate them, along with the application in respect of which the earlier search was carried out. Also, he can contain a statement that justifies the international application is the same, or substantially the same, as the previous application, unless it is filed in a different language.
Signature of Applicant
All the applicants must sign the request. It must be ensured by the receiving office.
- Date Format – “20 March 2004 (20.03.2004)/ 20 March 2004 (20/03/2004)/ 20 March 2004 (20-03-2004)” in Arabic digits.
- Supplement Box Format – “Continuation of Box No. IV”, when a material cannot be placed in particular box for place limitation.
- File Reference Format – The file reference is composed either of letters of the Latin alphabet or Arabic numerals, or both and cannot exceed 25 characters including spaces.
- Title of Invention – The title in Box No. I of the Request is considered as the title of the application. A title should be descriptive, which gives proper idea about invention.
- Applicant Format
- Name Format – The person’s Family name, then Given name only, family name will be in capital letters.
- Addresses Format – The address contains house no, road no etc. and also the name of the country for proper postal delivery.
- Designation of States Format
The filing of a request constitutes the designation of all Contracting States that are bound by the Treaty on the international filing date; an indication that the international application is, in respect of each designated State for the grant of every kind of protection which is available by way of the designation of that State and a regional patent, unless applies, a national patent.
Description of the background, drawings, usage and utility in A4 size paper format with 2cm margin and 2.5cm left margin.
Number and Numbering of Claims –
- Reasonable in consideration of the nature of the invention claimed.
- For several claims, numbered consecutively in Arabic numerals.
- The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.
References to Other Parts of the International Application –
- Cannot rely on such references as: “as described in part … of the description,” or “as illustrated in figure … of the drawings.”
- For the international application that contains drawings, the technical features mentioned in the claims preferably be contains the related reference signs, which is placed only between parentheses.
Manner of Claiming –
- Protection sighting definition of the matter is in terms of the technical features of the invention.
- If appropriate, claims contain a statement indicating those technical features of the invention and a characterizing portion – preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect – stating concisely the technical features.
Dependent Claims –
- Dependent claims contain reference for each claim
- References are added at the beginning, to the other claim or claims and also stated at additional features claimed.
- Multiple dependent claims refer to such claims in the alternative only and do not serve as a basis for any other multiple dependent claims.
- Dependent claim construes all the limitations which it refers.
- Multiple dependent claims contain all the limitations in the particular claim in relation to which it is considered.
- Dependent claims referring back to a single previous claim, and several previous claims, are grouped together to the extent and in the most practical way possible.
Utility Models –
Any designated State in which the grant of a utility model is sought on the basis of an international application applies in respect of the matters regulated in those Rules.
Numbering and Identification of Claims Upon Amendment
Amendments to claims is made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. Cancelled claims do not require renumbering. Renumbering is consecutively in Arabic numerals.
The applicant indicates the differences between the claims as filed and the claims as amended or, as the case may be, differences between the claims as previously amended and currently amended. Also, it is mentioned, whether the claim is unchanged, cancelled, new, replaces one or more claims as filed or as previously amended and is the result of the division of a claim was filed or was previously amended.
In the international application, applicant includes drawings, such as flow sheets and diagrams, within prescribed time limit which shorter than two months from the date of the written invitation requiring the filing of drawings or additional drawings under the said provision. These drawings are specific, detailed and offer clear ideas about the research.
The size of the sheets is A4 (29.7 cm x 21 cm) and the usable surface is at most 26.2 cm x 17.0 cm. There is no frame around the usable or used surface, instead there is margin whose dimensions are – top: 2.5 cm, left side: 2.5 cm, right side: 1.5 cm and bottom: 1.0 cm.
The drawings are free from text matter, except a single word or words, when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords indispensable for understanding and without interfering with any lines of the drawings.
The abstract consists of a summary of the disclosure, the claims, and any drawings, where applicable, the chemical formula etc. The abstract is concise to fit within 50 to 150 words and does not contains statements on the alleged merits or value of the claimed invention or on its speculative application.
The abstract contains the figure that best suitable with the findings of the research or paper, it is ensured by the authority.
The abstract serves as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher.
Basic Flow Under the PCT
- MEASURING TIME LIMITS UNDER THE PCT – measured from the “priority date” of the application
- INTERNATIONAL FILING DATE – generally filed within 12 months after the filing of the first application
- ESTABLISHMENT OF THE INTERNATIONAL SEARCH REPORT AND WRITTEN OPINION OF THE INTERNATIONAL SEARCHING AUTHORITY – three months from the receipt of the search copy by authority, or nine months from the priority date, whichever time limit expires later.
- INTERNATIONAL PUBLICATION – effected promptly after the expiration of 18 months from the priority date of that application.
- SUPPLEMENTARY INTERNATIONAL SEARCH (SIS) – at any time prior to the expiration of 22 months from the priority date
- DEADLINE FOR FILING THE DEMAND – filed prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report and the written opinion; or (B) 22 months from the priority date.
- DEADLINE FOR FILING COPY, TRANSLATION, AND FEE IN NATIONAL STAGE OFFICES – corresponding time limits for entering the national stage are provided by authority.
International Preliminary Examination Procedure
- EXAMINATION PROCEDURE –
In the international preliminary examination, the first step of the examiner is to study the description, the drawings (if any), the claims of the international application, the documents describing the prior art as cited in the international search report, and the written opinion established by the International Searching Authority. A further written opinion is usually not mandatory where the written opinion of the International Searching Authority is treated as the first written opinion of the International Preliminary Examining Authority.
- FURTHER WRITTEN OPINION SHOULD BE ISSUED –
A written opinion is prepared by the examiner if applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to a lack of novelty, inventive step (non-obviousness) or industrial applicability.
The U.S. Rules of Practice pertaining to international preliminary examination of international applications permit a second written opinion in those cases where sufficient time is available. Normally only one written opinion will be issued. Any reply received after the expiration of the set time limit will not normally be considered in preparing the international preliminary examination report, except some situations.
Agreement with the International Bureau to Serve as an International Preliminary Examining Authority
Authority carries out a preliminary examination. Procedure before the International Preliminary Examining Authority is governed by the provisions of this Treaty, the Regulations, and the agreement which is handled by the bureau.
The major functions of the International Preliminary Examining Authority include are – receiving and checking for defects in the Demand, forwarding Demands in accordance with given rules, collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority, informing applicant of receipt of the Demand, considering the matter of unity of invention, providing an international preliminary examination report which is a nonbinding opinion on the questions whether the claimed invention appears to be novel, to involve inventive step (to be nonobvious), and to be industrially applicable, and transmitting the international preliminary examination report to applicant and the International Bureau.
The Demand and Preparation for Filing of Demand
The international application is the subject of an international preliminary examination while submitting the demand. The Demand is standardized by the authority. Copies of the printed Demand forms are available from the authorized offices. Withdrawal of a proper Demand prior to the international preliminary examination entitles applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee. The filing of a Demand constitutes the election of all Contracting States. Any Demand filed after the expiration of the applicable time limit is considered as if it had not been submitted.
The applicant amends the claims, the description, and the drawings, in the prescribed manner and within the prescribed time limit.
The International Preliminary Examining Authority are concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national.
The right to make a demand exists if the applicant making the demand or, if there are two or more applicants, at least one of them is a resident or national of a Contracting State.
If the applicant does not have the right to make a demand or, in the case of two or more applicants, the demand is considered not to have been submitted.
The rule of being a resident or national of a Contracting State bound by Chapter II, regardless of the elected State(s) for which each applicant is indicated, are
- If there is a sole applicant, he or she must be a resident or national,
- If there are two or more applicants, it is sufficient that one of them be a resident or national.
If the recording of a change in the name or person has been requested, it is the applicant(s) of record at the time when the Demand is filed who must be indicated in the Demand.
Any agent entitled to practice before the receiving Office where the international application was filed may represent the applicant before the international authorities.
Filing a demand
On the demand of the applicant, his international application is the subject of an international preliminary examination. The demand contains the prescribed particulars and is prepared in the prescribed language and form. The demand is submitted to the competent International Preliminary Examining Authority referred to in.
CHOICE OF INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
- IPEA/US – serves as International Preliminary Examining Authority for U.S. residents and nationals if the USPTO, EPO, KIPO, IP Australia, Rospatent, ILPO, JPO or IPOS;
- IPEA/US serves as International Preliminary Examining Authority for residents or nationals of Bahrain, Barbados, Brazil, Chile, Dominican Republic, Egypt, Georgia, Guatemala, India, Israel, Jordan, Mexico, New Zealand, Oman, Panama, Peru, the Philippines, Qatar, Saint Lucia, Saint Vincent and the Grenadines, South Africa, Thailand, and Trinidad and Tobago if the USPTO was the ISA.
- U.S. residents and nationals choose to have the international preliminary examination done by KIPO or Rospatent if the USPTO, EPO, KIPO, IP Australia, Rospatent, ILPO, JPO, or IPOS served as the ISA.
- U.S. residents and nationals choose to have the international preliminary examination done by the EPO if the EPO served as the ISA.
- U.S. residents and nationals choose to have the international preliminary examination done by IP Australia if IP Australia served as the ISA and IP Australia has not received more than 250 international applications from the USPTO during the fiscal quarter.
- U.S. residents and nationals choose to have the international preliminary examination done by ILPO if ILPO served as the ISA. ILPO has certain restrictions of competency as an IPEA based upon the subject matter of the application.
- U.S. residents and nationals choose to have the international preliminary examination done by the JPO if the JPO served as the ISA.
- U.S. residents and nationals choose to have the international preliminary examination done by the IPOS if the IPOS served as the ISA.
Preliminary Examination Fees
If the handling and preliminary fees are not paid within the time, applicant is notified and given one month within which to pay the deficient fees plus a late payment fee equal to the greater of fifty percent of the amount of the deficient fees, but not exceeding an amount equal to double the handling fee; or an amount equal to the handling fee. It is to be noted that the one-month time limit set in this paragraph to pay deficient fees may not be extended.
Correction of Defects in the Demand
The type of correction determines whether the filing date of the Demand is to be changed. If the applicant complies with the invitation, the Demand is considered as if it had been received on the actual filing date, i.e., the original date of receipt, provided that the demand as submitted permitted the international application to be identified.
Notification to International Bureau of Demand
Each elected Office is notified of its election by the responsible authority.
Priority Document and Translation Thereof
If the International Preliminary Examining Authority needs a copy of the earlier application, the International Bureau promptly furnish such copy. If the translation is not furnished within that time limit, the international preliminary examination report is established as if the priority had not been claimed.
Ask questions about patentability of your invention
Is my invention patentable? The invention is patentable only if it falls in one of these 4 categories: (1) a process; (2) a machine or device; (3) a composition of two or more matters; and (4) a tangible article resulting from manufacturing process. Ask more…
Is my invention too abstract? If the invention is not an abstract idea, a formula, a law of nature, an abstract process, a discovery in pure science, a natural phenomenon, a product of nature, or a similar abstract idea or item of nature then it is not patentable. Ask more…
Questions about patent filing and prosecution process
What is the patent process? Getting a patent involves the following steps (Ask more…)
- Check if the idea is patentable. Also check if somebody has already publicly disclosed the invention. This requires searching existing patents and other publications.
- Draft the patent application. This is the most difficult part, as it requires a lot of skill, particularly to draft the legally enforceable claims part of the patent application.
- File the patent application with Patent office, like US Patent and Trademark Office (USPTO).
- Respond to Patent office rejections and objects in timely manner. Patent examiner most of the times comes back with rejects to patent application, usually because the invention is obvious (35 U.S.C. §103) or already publicly disclosed (35 U.S.C. §102). Patent application is abandoned if those rejections are not responded with proper legal arguments.
- In the end, if the patent application is granted, pay the patent issue fee to the patent office. After issue fee is paid, the patent will be officially issued and you would have enforceable patent rights.
Questions about provisional patent application
Should I file a provisional patent application? File a provisional patent application through an experienced attorney only if you need to expedite the process by some days, not to save money. Ask more…
Does provisional patent application cost less? In the long run provisional patent application costs more, because a non-provisional patent application has to be filed within 1 year of the provisional patent application. The fees and expenses paid for provisional patent application becomes an additional expense. Ask more…
Can provisional patent application cause problems? A quickly filed provisional patent application without thorough review can cause problem later when filing non-provisional application, as somethings required disclosures, description, examples and drawings are not included. A thorough review of the invention after searching prior inventions and considering the legal claims can reveal required disclosures, description, examples and drawings. If these are not included in a provisional patent application, but later included in a non-provisional patent application they are considered new subject matter, and can only get the filing date of the non-provisional patent, which is typically about 1 year after the provisional patent filing date. Ask more…
Ask questions about filing patent
- 3 Tips to ensure Patentability of your invention
- Is my invention patentable – is it a process, machine, manufacture, or composition of matter? Is it a patent ineligible abstract idea, law of nature, or natural phenomenon? Is it significantly more than an abstract idea with additional elements?
- Is it still possible to patent after publication? Was the invention published or made publicly available more than 1 year ago?
- Can prior inventions be easily combined, substituted, tried in obvious way, or applied using known techniques to produce predictable results? Does that make my invention obvious and not patentable?
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- Is it patentable, an abstract idea, a formula, or a product of nature?
- Is it public or obvious? Is it publicly available, or prior ideas be easily combined, substituted, or tried in obvious way?
- Should I file provisional or non-provisional application?
- Should I file utility or design application? What is the filing process?
- How about rejections, objections, reexamination, or appeal?
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The patent attorney has helped us with two patents. What impressed us the most is his expertise in both technicality and law. Our previous perception of working with patent lawyers was that they may do a good job in filing and negotiating, but when it comes to drafting and especially the iterations of revisions, it takes a lot of time and effort to explain to them and reach an agreement. In this case, he has the technical background comparable to that of the inventors, so we only needed the extent of details sufficient to communicate with a co-inventor/colleague. In particular, in the process of drafting, he was clear about the key point of each claim and how the system works, and able to make the modifications to satisfy the filing requirements. When later we had to revise the claims a few times, he always managed to make the best trade-off possible that addressed the patent examiner’s challenges, while not hurting the scope and value of the invention. With the complexity already time-consuming for us (as required by filing a patent), he could even maintain a turnaround of a day or just several hours.
Moreover, his helpfulness was also reflected in the sense that he made us convinced and understood the rationale of each decision point, instead of just making the changes on his own, so that we as the inventors can be synced and participate to achieve a better outcome. In the long term, what we’ve learned from him, the legal aspects and best practices, will facilitate our future research and production of inventions, as we were not well aware of these before.
Overall, during the whole process of both patents, we never felt that we were trying to “use” a patent lawyer, but just interacting with another co-inventor, in terms of: ownership, hard work, knowledge and ease of communication.
L. Zhao (Carleton University, Canada) and M. Mannan (Concordia University, Canada)