What we need from you for filing a US design patent application

Note: This article assumes that you are with a patent firm outside of the US, and that you have a client who is located outside of the US who wishes to file a US design patent application. If you are located in the US, or if you are not with a patent firm outside of the US, then this article is likely to be of little or no interest.

Reading this web page does not make you a client of Oppedahl Patent Law Firm LLC. If you want legal advice about the subjects discussed here, please consult competent counsel who can take into account all of the particular facts of your situation.

What is a design patent? US design patent protection is offered for the novel and unobvious ornamental features of an article of manufacture. You can see some of the issued design patents obtained by our firm. The term for an issued US design patent is fourteen years from the date of issue.

The typical sequence of steps for obtaining design patent protection in the US is as follows:

1. A design patent application is filed;
2. The application is examined;
3. There may or may not be one or more Office Actions;
4. If there is an Office Action, it must be responded to;
5. The USPTO mails a Notice of Allowance and Issue Fee Due;
6. The Issue Fee is paid;
7. The design patent is granted.

Here are a few comments on the time required for various steps of the process:

• It should be borne in mind that the priority period under Article 4 of the Paris Convention for designs is six months; the US design application should thus be filed (step 1) within six months of the oldest non-US application from which priority could be claimed.
• The waiting time for examination (interval between steps 1 and 2) is often in the range of six to twelve months.
• The response to Office Action must usually be made within three months, but that date (the interval between steps 3 and 4) may be extended by as much as three months upon payment of extension fees.
• The Issue Fee must be paid within three months, that is, the interval between steps 5 and 6 cannot exceed three months.
• It often takes the USPTO at least four months to issue the patent (the interval between steps 6 and 7 can be more than four months).

During examination (step 2), among other things, the Examiner considers:

• whether the subject matter is an article of manufacture;
• whether the ornamental features are novel;
• whether the ornamental features are obvious.

The problems with drawings for US design patent applications. In our experience the single thing that causes the most frustration and undesired expense in a US design application is the attempt to use non-US drawings. Many non-US patent offices will accept a wide range of types of drawings, including gray scale and photographs. Such drawings, however, are almost certain to be rejected by USPTO. The only drawings which USPTO will accept are pure black and white line drawings.

In the argot of image editors, such drawings "have a color depth" of two, meaning that each pixel is either pure black or pure white, and is no other color. If the image file is a JPG file, then it is almost surely not a good format for a US design filing.

Here are some examples of drawings from actual registered Community designs which, if identically filed as US design drawings, would almost certainly be rejected:

The USPTO's reasons for rejecting these drawings would include the use of color and the use of gray scale.

USPTO procedures do permit filing a design application with informal drawings, in which case the applicant is invited to file formal drawings at a later time. When there is little or no time available for filing a US design application, one may be forced by circumstance to file using informal drawings such as the original JPG drawings that were filed in the priority application. This approach is, however, almost certain to lead to great expense and uncertainty when the formal drawings are filed. The Examiner will often find real or imagined flaws in the formal drawings due to supposed introduction of "new matter" in the formal drawings, or due to non-identical content in the informal and formal drawings.

Our recommendation is that formal drawings be prepared prior to the filing of the US design application, and that the formal drawings be included in the design application from the beginning. These drawings must be line drawings, free from any gray scale or use of color. The drawings must provide a plurality of views including enough plan views to show everything about the article of manufacture that the applicant seeks to claim. It is desirable to provide at least one perspective view. Dotted lines may be employed to indicate either environmental matter which is desirable for understanding but not part of the claimed design, or elements of the article of manufacture that are not part of the claimed design. This drawing of a side-squeeze buckle shows the use of dotted lines. The drawings must be labeled with figure numbers, and the drawing sheets should have sheet numbers. Please see the link above to see examples of actual drawings from design patents obtained by Oppedahl Patent Law Firm LLC.

It sometimes happens that a patent firm outside of the US, or a client outside of the US, may have a relationship with a graphic artist who is experienced in the preparation of design drawings suitable for filing in the USPTO. In such cases it may save money and trouble for the client if this graphic artist prepares the formal drawings for filing in USPTO. But quite often it is our experience that we have to go back and forth with such a graphic artist several times until all of the changes have been made that permit use of the drawings in the USPTO. Our hourly fees in such a "back and forth" can cost a lot more money than simply having the drawings prepared by a professional patent draftsperson in the US.

For all of these reasons we recommend that the client give serious consideration to the use of a professional patent draftsperson in the US who is experienced making design drawings.

Other papers needed. In addition to the drawings, we need several other papers:

The Inventor's Declaration. One of the required documents for a US design patent application is the Inventor's Declaration. The Declaration refers to a patent application "attached hereto" and thus it cannot be signed until the application is ready to be filed. To say this differently, it does no good to obtain the inventor's signature on a date that is prior to the date that the application has been prepared for filing.

It is possible to wait until after the application has been filed, and to obtain the inventor's signature at that time. This may require payment of a modest additional government fee.

The signed Declaration can be faxed to us (or can be scanned as a PDF and emailed); we do not require the original signed document.

Another required document is the Application Data Sheet (ADS). To complete the ADS, for each inventor we must know the inventor's citizenship, the inventor's residence city and country, and a postal address for the inventor (which can be but need not be the same as the residence address). We must also know the priority information (the application numbers and filing dates for every application from which priority could have been claimed).

Assignment. For most clients it is intended that the US design patent application be owned by the client, which is typically a legal entity and not a natural person. To bring about this ownership the usual approach is that each of the inventors assign his or her rights to the client. The signed Assignment can be faxed to us (or can be scanned as a PDF and emailed); we do not require the original signed document.

Power of Attorney. We require that a Power of Attorney be signed by the client. This can be faxed to us (or can be scanned as a PDF and emailed); we do not require the original signed document.

How much does this cost?

• You can see our patent prosecution fee schedule, which controls in the event of any discrepancy between the fee schedule and this web page. The government fee for filing the patent application (step 1) is $460. (That fee is cut in half if the applicant is a "small entity".) Assuming that we are filing based upon a previous design filing in an Office outside of the US, and assuming that the drawings from the previous filing are suitable for use in the USPTO, then our professional fee to file the application (step 1) is $600.
• We cannot predict whether there will or will not be any Office Action. If there is no Office Action, then the sole remaining cost is for payment of the Issue Fee. If there are Office Actions, then we charge hourly fees for responding (step 4) to each Office Action.
• If the case is allowed, then an Issue Fee of $860 is payable (step 6). (This fee is cut in half for a "small entity".) Our professional fee to pay the issue fee is $400.
• USPTO does not charge maintenance fees or annuities for design cases.
• Recording an assignment usually involves a government fee of $40 and our professional fee of $120.
• Filing formal documents at a time other than when the application is filed involves an additional professional fee. Thus it is to the client's advantage if all signed documents can be provided to us at or prior to the date the application is to be filed.

The professional fees discussed above rely upon several assumptions:

• that we are dealing with a patent firm outside of the United States, and that the patent firm in turn serves its client;
• that our invoices are paid to us promptly by the patent firm (less than one month) even if the client has not yet paid the patent firm's invoice;
• that we are paid the full amount of an invoice (all bank wire fees paid by the sender and not charged to us);
• that all requested information, instructions, and documents are provided to us promptly, by email or fax;
• that Oppedahl Patent Law Firm LLC does not need to ask repeatedly for information, instructions, or documents;
• that papers requiring signature are signed and returned to us promptly.

Oppedahl Patent Law Firm LLC

https://www.oppedahl.com