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. For US design patents issuing on applications filed on or after May 13, 2015, the term is fifteen years from the date of issue. For US design patents issuing on applications filed prior to May 13, 2015, the term is fourteen years from the date of issue.

Subject matter for design patents. By far the majority of issued US design patents are for traditional physical articles of manufacture, namely "things you can drop on your foot". US design patents have, however, been obtained for such things as screen icons and user interfaces. In recent years the number of design patent applications on graphical user interfaces has increased greatly. Here are a couple of figures from a GUI design patent. Note that the figures are in color.

Sequence of steps. 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 twelve to thirty 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 around six weeks to issue the patent (the interval between steps 6 and 7 might be six weeks).

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

• whether the application as filed enables one skilled in the relevant art to practice the invention;
• 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 intellectual property offices will accept a wide range of types of drawings, including gray scale and photographs. Such drawings risk being rejected by the USPTO.

As of May 13, 2015, color drawings are permitted in design applications. This includes gray scale and photographs. But this does not mean that one may safely assume that a photograph or gray scale drawing filed in a non-US intellectual property office will automatically satisfy all requirements for a US design patent application. For example a photograph drawing from a non-US application might only show one view of the article of manufacture. US design patent Examiners are accustomed to seeing as many as seven views of such an article (top, bottom, front, back, left, right, and at least one perspective view).

Many US design patent Examiners are accustomed to the types of drawings which were required prior to May 13, 2015, namely pure black and white drawings prepared by a draftsperson experienced with US design patent practice. 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. No pixel is gray and no pixel is any color other than black or white.

Since May 13, 2015 the design Examiners in the USPTO have gradually become accustomed to drawings other than pure black and white drawings. But this still means that design applicants need to think about providing multiple views rather than only one view, and any color or gray scale drawing would need to be sufficiently clear to show the inventive ornament of the design.

Here are some examples of drawings from actual registered Community designs which, if identically filed as US design drawings, might not be accepted by the US Examiner:

The US Examiner might say that the photograph of the shoe is non-enabling because it fails to show the far side of the shoe. The US Examiner might say the same thing about the object in the gray-scale photograph.

When an application is filed using color drawings or color photographs, the applicant will need to explain whether the use of color is being claimed.

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 drawings that were filed in the priority application (which might be of poor quality). This approach is, however, almost certain to lead to great expense and uncertainty when the formal drawings are filed. The US 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 US design application from the beginning. 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. Broken 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.

Unclaimed subject matter. US design applicants can, and in many cases should, pay attention to what is being claimed and what is not being claimed. One way to show unclaimed subject matter is to use broken lines. Another way is to use words to say what is unclaimed. At right is a portion of a drawing of a consumer electronic device. In this drawing, broken lines are employed to show unclaimed subject matter.

To comport with US practice, the drawings must be labeled with figure numbers (unless there is only one figure), 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.

Deciding whether or not to use pure black and white drawings. 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 that has decided to use pure black and white drawings give serious consideration to the use of a professional patent draftsperson in the US who is experienced making design drawings.

Restriction practice and divisional applications. In some design patent applications the Examiner will impose a Restriction Requirement on the view that there are two or more distinct inventions among the claimed embodiments. The applicant is unlikely to succeed in traversing such a Restriction Requirement. The applicant needs to be prepared to file divisional applications directed to all of the restricted-out subject matter, so as to avoid the risk of disclaiming to the public the restricted-out subject matter.

Stated differently, the applicant that is not prepared to spend the time and money needed to file divisional applications ought to plan ahead at the time of filing the initial design patent application so as to disclose and claim only one invention.

Presenting more than one embodiment in the application as filed. Sometimes the application as filed will present more than one embodiment. This can happen in several different ways:

• using the Patent Law Treaty to "file by reference" from a non-US application containing more than one embodiment;
• designating the US in a Hague design application containing more than one embodiment;
• filing a new US design patent application containing more than one embodiment.

As mentioned above, the applicant that presents more than one embodiment, and then encounters a Restriction Requirement, and then fails to file divisional applications directed to the various embodiments, runs the risk of having been deemed to dedicate one or more of the embodiments to the public.

Continuation practice. As mentioned above, broken lines may be used to denote unclaimed subject matter. Present US practice permits the applicant to change a broken line to a solid line or vice versa without adding new matter. With some designs, particularly those in highly competitive consumer-goods industries, the applicant may wish to consider filing one or more continuation applications in which such broken-line changes are made. This permits the applicant to explore the range of claim scopes available given the relevant prior art.

The applicant that is not prepared to spend the time and money needed to file such continuations may wish to devote some not inconsiderable time and effort prior to filing the initial design patent application to consider what should be shown in broken lines and what should not.

Specification and claim. A US design application is required to have a specification and a claim.

Other papers needed. In addition to the drawings and specification and claim, 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.

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

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

US rules permit postponing the filing of the signed inventor declaration until the case is allowed. We do not recommend such postponement.

It is very helpful if the signed Declaration can be provided in the initial instruction package.

Application data sheet. Another required document is the Application Data Sheet (ADS). To complete the ADS, for each inventor we must know 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 is being claimed or could have been claimed). We also need to know the name and address of the applicant.

Information Disclosure Statement. The patent law in the US imposes a duty upon the applicant in a design patent application to disclose to the USPTO all relevant prior art known to the applicant. This is done by means of an Information Disclosure Statement ("IDS"). Please see our discussion of IDSs which explains how to know what needs to be disclosed. For a design patent application, it is important to disclose the applicant's own previous articles of manufacture, and previously obtained US design patents and registered designs in other countries, to the extent that they are relevant to the novelty and unobviousness of the applied-for design. Likewise a competitor's own previous articles of manufacture, and previously obtained US design patents and registered designs in other countries, to the extent that they are known to the applicant and are relevant to the novelty and unobviousness of the applied-for design, should be disclosed.

We will need from you:

• identification by email of all references to be disclosed in the Information Disclosure Statement (IDS) and for each, the relevant publication date or date of public use
• a PDF copy by email of each reference
• for each reference to be disclosed in an IDS that is not in the English language, a translation of that reference into the English language (or a concise explanation of relevance thereof)

It is desirable if all references to be disclosed in the IDS can be provided to OPLF in the initial instruction package.

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 black and white PDF and emailed); the USPTO does not require the original signed document. Generally the applicant will be the assignee, or, to say this differently, there will be a non-inventor who is the applicant. OPLF is likely to be unwilling to accept representation in cases where there is no non-inventor applicant.

It is very helpful if the signed Assignment can be provided in the initial instruction package.

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 black and white PDF and emailed); the USPTO does not require the original signed document. Generally OPLF expects that the client will be a non-inventor applicant.

It is very helpful if the signed Power of Attorney can be provided in the initial instruction package.

How much does this cost?

• The government fee for filing the patent application (step 1) is likely to be about $960 (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 likely to be about $700.
• 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 about $700 is payable (step 6). (This fee is cut in half for a "small entity".) Our professional fee to pay the issue fee is usually about $400.
• USPTO does not charge maintenance fees or annuities for design cases.
• Recording an assignment usually involves 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 the filing instructions are received with at least ten days to spare prior to the desired filing date;
• that the design that is the subject of the application has three embodiments or fewer;
• 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.

Patent practitioners who work in the area of industrial designs (including US design patents) are invited to join the OPLF listserv on this subject.

Oppedahl Patent Law Firm LLC

https://www.oppedahl.com