5 Written questions
5 Matching questions
- The Claim in Design Patents
- What are the two steps for the prima facie obviousness test for patents?
- What are the elements of a design patent?
- Computer Icons
- a 1) App fee & transmittal forms
3) The specification (including the single claim)
- b 1) Appropriate if the designer of ordinary skill would modify a prior art reference to remove some features to arrive at the new design (same thing as removing parts of an invention that are not functional, no patent for obviousness).
2) As usual, the applicant may rebut a prima facie case for obviousness.
- c They still have to meet the above requirement to be part of an 'article of manufacture' instead of just being abstract drawings:
1) 2D computer icons are considered as surface ornamentation, so as long as this icon is part of another item of manufacture (like appearing on a monitor with a product) it is just another type of ornamentation. Example: Icons on an iPhone screen can get design patents.
2) As long as there is an embodiment the icon may be patented.
- d : It is possible to get a utility patent (35 U.S.C. 101) on a plant instead of the plant patent (35 U.S.C. 161) so plant patents are not exclusive to utility patents (although you have to choose one or the other).
- e The (single) claim is of the form: "The ornamental design for (the article that embodies the design or the article that the design is applied to) as shown
2) As a corollary, if the examiner sees anything looking distinct/separate in the design app, a restriction to elect 1 claim will be mandatory (remember than in utility apps the restriction is not 100% mandatory if the examiner does not see an undue burden in the examination, but here it is)
3) Divisional continuations are still available for restrictions in design apps.
5 Multiple choice questions
- 1) There is only 1 claim allowed in any design app!
2) The protection for a design patent only lasts for 14 years from the grant date (20 years from the effective filing date for a utility.
3) While a design app can get foreign priority under 35 USC 119(a)-(d), there is only a 6 month window from time of the earliest foreign filing until the US filing that claims priority (as opposed to 12 months for a utility app)
4) A design patent cannot claim the benefit of PA under 35 USC 119(e); BUT it can claim the benefit of prior filed NPA (35 USC 120 is OK)
5) There is no RCE under a design app, instead a CPA is used exclusively for continuations in design apps
6) Design apps are never published
7) There is no provision for an international app that is moved onto the national stage under the PCT for design apps (only US apps, or US apps claiming priority over purely-foreign design apps).
8) Maintenance fees: Utility patents need maintenance fees paid after the patent is granted, design patents do not have these fees
- Only asexually produced plants (or sexually or asexually produced plants)
- The term for plant patents is the same as for utility patents: 20 years from the effective filing date.
- "New, original, and ornamental design for an article of manufacture" including:
1) A design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (like the design on the outside)
2) a design for the shape or configuration of the article (like the shape of the case, how the overall product appears)
3) A combination of the first 2 categories.
- The factual inquiry is to determine if the new design is actually novel, and has not been anticipated in all respects by prior art. As long as the "average observer" would not see the prior art as anticipating the new design in every element, it is novel. (This is 35 U.S.C. 102 reasoning!) Remember, the prior art does not have to be analogous, it could come from any source.
5 True/False questions
What are the elements of the drawings for design patent? → 1) Views (design draft)
2) Broken lines
3) Photos & Color Drawings (normally drawings are B&W)
What is the app fee and the transmittal forms like for design patents? → Just like utility apps
35 USC 112 Considerations → 1) Under paragraph 1: if the drawings do not properly disclose the design or if the designer of ordinary skill will not be able to reproduce the design from the information given in the spec/drawings then it will be rejected for not being properly described or enabled.
2) Under paragraph 2: Definiteness is still important in the claims. Simply saying "or similar article" , "or the like" will not be definite enough when describing the design. However, that broadening language could be OK if it is instead used in describing the types of environment in which the design would be used (like: "used in a kitchen or the like") since that is just background info and not about the design itself.
Simulations do not get patents → Remember, the ornament must be original, simply copying another design and reproducing it (simulation) is not original, no patent.
Elements of the plant patent → 1) Description