Best Practices for Design Patents
For these reasons and more, many innovators find design patent protection an appealing option to provide additional protection for an innovative article of manufacture. Here are some guidelines or best practices to follow when preparing a U.S. design patent application.
1- Know the Subject Matter Qualifications- A design patent protects the visual ornamental characteristics of an invention. A common misconception is that if there is any utility to the invention, a design patent is not available to cover the subject matter of that invention. However, this is not always the case. If the product is functional, but also includes features that are purely ornamental, a design patent may be obtained on those specific ornamental features. The question to ask is: what is unique? Is it the look of the invention or only the function? If the design of the invention is dictated by function and lacks ornamentality, then a design patent would not be appropriate. However, if only the look of the invention is unique, or if both the look and function are unique, then a design patent may be appropriate.
2- Drawing Quality is Key- As mentioned above, design patents protect only the ornamental characteristics of the design, which are the features shown in solid lines in the figures of the design patent application. Therefore, good quality drawings are essential, as they define the bounds of what exactly is protected. The design patent Examiner will require good quality drawings to grant the patent, but the quality of the drawings will also be important down the road if and when the scope of the patent is determined and the particular design being protected is interpreted. Use of a draftsperson who is familiar with the drawing requirements associated with design applications is highly recommended.
3- Figure Views Should be Consistent- Many rejections received by applicants for design patents involve inconsistencies in the drawings. Design patents require a sufficient number of views to completely disclose the appearance of the invention. Most design patents require seven (7) views of the invention – front, rear, top, bottom, right side, left side, and at least one perspective view. These views must be consistent with each other so a full understanding of the design can be reached. Elements shown in each figure should be shown in all others, assuming that the element can be seen in that particular view. Solid and broken lines should be consistent as well.
4- Use of Solid vs. Broken (Phantom Lines)- As discussed above, the solid lines in the figures of a design patent application function to define the scope of the invention. Broken (sometimes called phantom) lines may be used to show the environment in which the article is used, but do not form a part of the invention. Therefore, if a product includes all the features shown in solid lines in a design patent, but not the features shown in broken lines, that product still infringes that design patent. Similarly, if a prior art reference shows the features in solid lines but not the broken lines of a design, that prior art reference can still anticipate the design patent application. An application that includes broken lines should include a paragraph in the specification indicating that the broken lines are for illustrative purposes only and form no part of the claimed design.
In addition, broken lines may be used to broaden the scope of the design patent in a continuation application. For example, a continuation application may convert originally-disclosed solid line structure to broken lines. Since it is the solid lines that function to define the scope of the invention, replacing solid lines with broken lines necessarily broadens the scope of the design patent.
5- Include Additional Embodiments- Similar concepts with slightly different modifications, such as certain features being shown in solid and broken lines, should be filed in the same application. The Patent Office may or may not issue a restriction requirement, depending on how closely related the designs are, and further depending upon the particular Examiner assigned to your application. Including different embodiments allows different levels of protection for the same invention. There is no downside to including embodiments of different scope in the same application. The Patent Office will issue a restriction if warranted, and subsequent divisional applications can be filed which are directed to the restricted embodiments. Alternatively, an Appendix including additional or related embodiments may be filed in the application. The Appendix will serve as support for future drawing amendments or continuation applications and should be canceled by the Examiner upon allowance of the application.
Conclusion- In short, design patents should be considered to provide an alternative or additional means of protection for an invention, and generally have a lower cost, higher allowance rate, and faster timeline than utility applications. The guidelines outlined above should be considered when preparing an application for an ornamental design.