Effective and Efficient Filings of Your Design Patent Application/Registration (U.S.A.)

In my prior post I discussed benefits of seeking design patent protection for your products, which can often provide effective protection for products to be imported and marketed in the United States of America. This protection can be exclusive of but concurrent with any “regular utility” patent applications filed in the USA.  An advantage of filing one or more concurrent design patent applications is that the design patent application is often issued as a US Design Patent months, or a year (or more,) prior to the issuance of a related “regular utility” patent application. The US Design Patent provides a patent right that is enforceable at an earlier date, and can be asserted against infringers. The opportunity to hale an infringer into the Courts (or the International Trade Commission) can be particularly valuable to small businesses and start up companies as the existence of a granted patent gives rise to an opportunity to defend patent rights at an early date in a product’s life cycle.

In this article, I’ll provide some guidelines for maximizing the scope of your protection for your design patent applications in the USA as well as how to use it to seek effective protection overseas, - and how to minimize your costs for doing so!  In a future article I’ll discuss in detail on how to easily extend your protection to many foreign jurisdictions based on an existing US design patent applications in a “single step” application via the Hague Agreement Concerning the International Registration of Industrial Designs

The US offers some helpful advantages for those seeking design patent protection.

(a) The costs are relatively modest for filing.   Notably there are no additional fees if multiple related embodiments of a design are filed in a single application.  Currently, the official fees for filing  a US Design patent application are US$960.-- for a “large entity” and US$480.-- for a “small entity.”

(b)  The US permits the filing of multiple designs in a single application which can be useful in quickly getting your application on file.  Based on my experience, there are a few caveats to this practice however, which I discuss as follows:

First, is it important to keep in mind that while two or more designs can be filed, each design embodiment must be filed with the necessary views (ideally, a perspective view, a top view, a bottom view, a left elevation view, a right elevation view, a back elevation view and a front elevation view) in order to procure the best available protection.  This is actually part of the “enablement requirement” set forth in 35 USC §112.  It’s best to combine only similar embodiments of a design in a single design application, so that the Examiner taking up the application is  less likely to issue a “restriction requirement”, thus forcing the applicant to file a second design patent application -- and pay the fees for that application.   So while there is a risk of having an Examiner enter such a restriction requirement, forcing a division of the originally filed US Design Patent application into two or more separate US Design Patent applications, such is not necessarily a disadvantage.  In such an instance, the earliest filing date is afforded to the later filed divisional application(s) so there is no prejudice to the filing date, and dealing with the formalities documents (the Oath and Declaration, Assignment) is inherited from the first filed application.  To ameliorate this risk, similar designs can be combined and I would recommend that this be scrutinized before filing.

Second, I urge clients to take advantage of the “broken line” practice that is readily available to applicants filing in the US Patent and Trademark Office.  In the USA, the scope of design protection is based upon the drawings filed in the application, which underscores the need to have excellent design drawings in the application on the date of its filing!   It is however often advantageous to consider what parts of a design are the most critical feature to be protected, i.e., is it perhaps a subsection of the design such as an element that is intended to interface with a further article?  This might be the case where an article is to be connected with or mounted on another article, i.e.,  an interconnection surface of a replacement part or modular part.  It might also be a part of a design that might be considered ancillary to a critical design feature, i.e., an intermediate part between two ends where the length might be variable between these two ends.  A further, and frequent instance where the “broken line” practice is advantageously invoked is where there may be features forming part of a surface (i.e., ridges, recesses, or roughened or dimpled parts of a surface that in addition to providing a unique visual design feature also may provide a gripping surface) that may be changed in time, or that are not critical design elements of an overall product’s design.  It is highly advantageous then, at the time of filing of the application in the US Patent and Trademark Office, to consider filing one or more further sets of design drawings, wherein each further set includes regions of the applied-for design depicted in “broken line” format.  Under US law, those parts of the applied-for design encompassed by the regions in “broken line” are not considered to fall within the scope of the claimed design -- so, here the old adage of “less is more” applies!  More simply stated, comparing a first embodiment of a design as depicted in the necessary drawings with a second embodiment of the same design  -- which second embodiment essentially duplicates the drawings of the first embodiment, but includes parts depicted in “broken line” format -- the scope of protection afforded by the second version is broader that the first embodiment.

Thus, for the modest costs for preparing similar sets of drawings having portions in “broken lines,” where similar sets are based upon a first set of design drawings having no “broken lines,” enhanced protection is possible.  And in the present day when computer drafting programs are routinely used by draftspersons, following the generation of the first set of design drawings, the production of one or more further sets of design drawings having parts in “broken lines” is a relatively trivial exercise and can be done at modest additional cost.

Third, I have frequently found that wherein a US Design patent application is filed, and the application includes as a first embodiment, a first set of drawings to a design which has no “broken lines,” and includes one or more further sets of drawings that are clearly based upon this first drawing set but differ in including parts that are depicted in “broken lines,” then the US Patent Examiner is unlikely to issue a restriction requirement and force the filings of a divisional patent application.  Why?  When such an application is received, depending upon the nature of the article encompassed by the application, it will be assigned to a “Class” and a “Subclass” of designs, and if the Examiner feels they can search all of the various embodiments presented in the design application without requiring consideration of other Class(es) and/or Subclass(es), then they are less likely to file a restriction requirement.  So it is quite possible that a single US Design Patent will issue with several different versions (different embodiments) of the designs encompassed, .. and only a single Issue Fee will need to be paid.

Based on my experience, the above practice is most successful when it is clear that the scope of the search of prior art that is to be undertaken by the Examiner is not enlarged by having designs to articles that are likely to be assigned different  “Classes” and “Subclasses,” In this case the Examiner, who is given a limited amount of time to perform the task of searching, will almost invariably issue a restriction requirement, noting that there are distinct and distinguishable designs as evidenced by being assignable to different “Classes” and/or “Subclasses,”which would be different “inventions”.  In this situation it is highly improbable that the Examiner would withdraw an issued restriction requirement.

(c)  Currently, the US Patent and Trademark Office does not impose any post-grant fees, i.e., annuities, which are due in order to maintain the US Design Patent in force for the entire 15 year term that the granted US Design Patent enjoys.  So for applicants, this reduces costs for maintaining their patent portfolio.

In summary, the scope of protection of  US Design Patents can be maximized by carefully preparing additional sets of drawings incorporating “broken lines” that expand the scope of protection and filing these with a first embodiment that depicts the entirety of the design in solid lines. This also decreases the likelihood that the US Patent Examiner will issue a restriction requirement during prosecution.  If all of the embodiments are ultimately granted, then the issuance of a single US Design Patent, upon the payment of a single Issue Fee may be realized, and no further annuity payments will be due for the entire term of the issued US Design Patent in order to maintain it in force.

If you have any questions about this post, or other patent questions, please contact me at anparfomak@nmmlaw.com.