Chapter 1500 Design Patents - United States Patent and ...

1 Chapter 1500 Design PatentsStatutes and Rules Applicable1501 Definition of a Design1502 Distinction Between Design andUtility Elements of a Design PatentApplication Filed Under 35 161503 Examination1504 Statutory subject matter for Computer-Generated (a) Design Comprising MultipleArticles or Multiple PartsEmbodied in a Single (b) Lack of (c) (d) Offensive subject (e) Considerations Under 35 Double [Reserved] Priority Under 35 119(a)-(d),386(a) and (b) [Reserved] Benefit Under 35 [Reserved] Expedited Term of Design Patent1505 [Reserved]1506-1508 Reissue of a Design Patent1509 Reexamination1510 Protest1511 Relationship Between Design Patent ,Copyright, and Trademark1512 Miscellaneous1513 1501 Statutes and Rules Applicable[ ] Design Patents are provided for in 35 chapter16. In addition, international Design applicationsfiled under the Hague Agreement Concerning theInternational Registration of Industrial Designs( Hague Agreement ) are provided for in 35 38.

2 Certain statutory provisions in 35 38 provide for the applicability of theprovisions of 35 Chapter 16 to internationaldesign applications. See 35 382(c), 383, and389(b). See MPEP Chapter 2900 for additionalinformation concerning international right to a Patent for a Design stems from:35 171 Patents for designs.(a) IN GENERAL. Whoever invents any new, original,and ornamental Design for an article of manufacture may obtaina Patent therefor, subject to the conditions and requirements ofthis title.(b) APPLICABILITY OF THIS TITLE. The provisionsof this title relating to Patents for inventions shall apply topatents for designs, except as otherwise provided.(c) FILING DATE. The filing date of an application forpatent for Design shall be the date on which the specification asprescribed by section 112 and any required drawings are Design applications filed under 35 chapter16:37 CFR Rules rules relating to applications for Patents for other inventionsor discoveries are also applicable to applications for Patents fordesigns except as otherwise international Design applications designating theUnited States :37 CFR Rules applicable.

3 (a) The rules relating to applications for Patents for otherinventions or discoveries are also applicable to internationaldesign applications designating the United States , except asotherwise provided in this Chapter or required by the Articlesor Regulations.(b) The provisions of , , except for (c),and through shall not apply to internationaldesign rules relating only to Design applications, suchas 37 CFR and those contained in 37 CFR Part 1, Subpart I, are reproduced in the sectionsof this Chapter and in MPEP Chapter 2900, is noted that Design Patent applications are notincluded in the Patent Cooperation Treaty (PCT),and the procedures followed for PCT internationalRev. , June 20201500-1applications are not to be followed for Design practices set forth in other chapters of this Manual of Patent Examining Procedure (MPEP)are to be followed in examining applications fordesign Patents , except as particularly pointed out inthis Chapter or in MPEP Chapter 2900.

4 Also, withrespect to international Design applications thatdesignate the United States , 35 389(b)provides that [a]ll questions of substance and,unless otherwise required by the treaty andRegulations, procedures regarding an internationaldesign application designating the United States shallbe determined as in the case of applications filedunder Chapter 16. Accordingly, many of thepractices set forth in this Chapter , such as thosepertaining to examination in MPEP 1504, areapplicable to international Design applications thatdesignate the United States . Differences in practicesare noted in this Chapter where Definition of a Design [ ]In a Design Patent application, the subject matterwhich is claimed is the Design embodied in orapplied to an article of manufacture (or portionthereof) and not the article itself.

5 Ex parte Cady,1916 62, 232 621 (Comm r Pat. 1916). [35 ] 171 refers, not to the Design of anarticle, but to the Design for an article, and isinclusive of ornamental designs of all kinds includingsurface ornamentation as well as configuration ofgoods. In re Zahn, 617 261, 204 USPQ 988(CCPA 1980).The Design for an article consists of the visualcharacteristics embodied in or applied to an a Design is manifested in appearance, thesubject matter of a Design Patent application mayrelate to the configuration or shape of an article, tothe surface ornamentation applied to an article, orto the combination of configuration and is inseparable from the article to which it isapplied and cannot exist alone merely as a schemeof surface ornamentation. It must be a definite,preconceived thing, capable of reproduction and notmerely the chance result of a Distinction Between Design andUtility Patents [ ]In general terms, a utility Patent protects the wayan article is used and works (35 101), whilea Design Patent protects the way an article looks(35 171).

6 The ornamental appearance for anarticle includes its shape/configuration or surfaceornamentation applied to the article, or both. Bothdesign and utility Patents may be obtained on anarticle if invention resides both in its utility andornamental utility and Design Patents afford legallyseparate protection, the utility and ornamentality ofan article may not be easily separable. Articles ofmanufacture may possess both functional andornamental of the more common differences betweendesign and utility Patents are summarized below:(A) The term of a utility Patent on an applicationfiled on or after June 8, 1995 is 20 years measuredfrom the filing date; or if the applicationcontains a specific reference to an earlier applicationunder 35 120, 121, 365(c), or 386(c), 20 yearsfrom the earliest effective filing date, while theterm of a Design Patent is 15 years measured fromthe date of grant, if the Design application was filedon or after May 13, 2015 (or 14 years if filed beforeMay 13, 2015).

7 (See 35 173 as amendedunder section 102 of the Patent Law TreatiesImplementation Act, 126 Stat. at 1531-32).(B) Maintenance fees are required for utilitypatents (see 37 CFR ), while no maintenancefees are required for Design Patents .(C) Design Patent applications include only asingle claim, while utility Patent applications canhave multiple claims.(D) Restriction between plural, distinctinventions is discretionary on the part of theexaminer in utility Patent applications (see MPEP 803), while it is mandatory in Design patentapplications (see MPEP ). 1500 -2 Rev. , June 2020 MANUAL OF Patent EXAMINING PROCEDURE 1502(E) An international application designatingvarious countries may be filed for utility patentsunder the Patent Cooperation Treaty (PCT), whereasan international Design application designatingvarious countries may be filed for Design protectionunder the Hague MPEP Chapter 2900 for international designapplications.

8 (F) Foreign priority under 35 119(a)-(d)can be obtained for the filing of utility patentapplications up to 1 year after the first filing in anycountry subscribing to the Paris Convention, whilethis period is only 6 months for Design patentapplications (see 35 172).(G) Utility Patent applications may claim thebenefit of a provisional application under 35 (e) whereas Design Patent applications may 35 172 and 37 CFR (a)(4) .(H) A Request for Continued Examination(RCE) under 37 CFR may only be filed inutility and plant applications filed under 35 (a) on or after June 8, 1995, while RCE is notavailable for Design applications (see 37 (e)).(I) Continued prosecution application (CPA)practice under 37 CFR (d) is only available fordesign applications filed under 35 Chapter 16(see 37 CFR (d)(1)).(J) Utility Patent applications filed on or afterNovember 29, 2000 are subject to applicationpublication under 35 122(b)(1)(A), whereasdesign applications filed under 35 Chapter 16are not subject to application publication (see 122(b)(2)).

9 Other distinctions between Design and utility patentpractice are detailed in this Chapter and MPEPC hapter 2900 for international Design otherwise provided, the rules for applicationsfor utility Patents are equally applicable toapplications for Design Patents (35 171 and37 CFR and ).1503 Elements of a Design PatentApplication Filed Under 35 chapter16 [ ]This section sets forth the elements of a designapplication filed under 35 Chapter of an international Design application areset forth in MPEP Chapter 2900, though referenceto international Design applications that designatethe United States is included in this section Design Patent application has essentially theelements required of an application for a utilitypatent (see Chapter 600). The arrangement of theelements of a Design Patent application filed under35 Chapter 16 and the sections of thespecification are as specified in 37 CFR claim in a specific form is a necessary element ofa Design Patent application.

10 See MPEP ,subsection drawing is an essential element of a Design patentapplication. See MPEP for requirementsfor Specification [ ]37 CFR Title, description and claim, oath or declaration(for applications filed on or after September 16, 2012).(a) The title of the Design must designate the particular description, other than a reference to the drawing, isordinarily required. The claim shall be in formal terms to theornamental Design for the article (specifying name) as shown,or as shown and described. More than one claim is neitherrequired nor permitted.(b) The inventor's oath or declaration must comply with therequirements of , or comply with the requirements of for a substitute statement.**37 CFR (pre-AIA) Title, description and claim, oath ordeclaration (for applications filed prior to September 16,2012).