- Inventions of any new and useful process, machine, composition of matter or an improvement (Utility Patent)
- Inventions of new, original and ornamental designs for an article of manufacture (Design Patent)
- Gives owner right to exclude competitors from making, using, selling, offering to sell, or importing invention covered by patent
- Not a right (nor required) to use
- Requires approval and grant from US gov’t. (no state or common law)
Design Patent Requirements
- Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
- Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
What is an Ornamental Design for an Article of Manufacture?
(A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia)
(B) a design for the shape or configuration of an article of manufacture
(C) a combination of the first two categories.
|ELIGIBLE FOR A DESIGN PATENT PROTECTION
The ornamental design for the toy figure, as shown and described.
|NOT ELIGIBLE FOR DESIGN PATENT PROTECTION
- “An ornamental feature or design has been defined as one which was ‘created for ornamenting’ and cannot be the result or ‘merely a byproduct’ of functional or mechanical considerations.” MPEP 1504.01(c)
- Cannot use a design patent to protect an article when the function dictates its Design
- Back to the statute (§171): “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor”
A person shall be entitled to a patent unless—
- the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
- the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
- Things that Are Not Required for Design Patent Protection
- Inherent distinctiveness
- Acquired distinctiveness
- Use in commerce
- “Likelihood of confusion”
- Conceptual Separability
- If a company obtains a design patent, it does not mean they can get trade dress and/or copyright protection
Design Patent v. Other IP
Include a drawing from all the sides of the object.
Consistency between views!!
- USPTO will issue rejections under 35 USC 112(a) or (b) if the drawings are unclear as to the scope of the design, or if features are not clearly shown
Duty of Disclosure
- Inventors, applicants, and attorneys have a duty to disclose to the USPTO information “reasonably pertinent” to the patentability of invention
- Pre-filing searches
- Office actions in corresponding foreign applications
- Failure to comply can result in weaker presumption of validity and possible inequitable conduct
US Examination Timeline
- Average time to first action is 16.2 months (as of Nov. 2023)
- By comparison, 20.5 months for utility patents
- Examination can be expedited by filing a request with USPTO and payment of additional fee
- Average time to first action: 1.3 months (as of Nov. 2023)
- Design allowance rate: 81.5%
- For USPTO fiscal year 2024 as of Jan. 3, 2024