The Design Patent Application Process
The preparation of a design patent application and the conducting of the proceedings in the Patent and Trademark Office to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Patent and Trademark practice and procedures. A patent attorney or agent specially trained in this field is best able to secure the greatest patent protection to which applicant is entitled. It would be prudent to seek the services of a registered patent attorney or agent. Representation, however, is not required. A knowledgeable applicant may successfully prosecute his or her own application. However, while a patent may be obtained in many cases by persons not skilled in this work, there is no assurance that the patent obtained would adequately protect the particular design.
Of primary importance in a design patent application is the drawing disclosure, which illustrates the design being claimed. Unlike a utility application, where the “claim” describes the invention in a lengthy written explanation, the claim in a design patent application protects the overall visual appearance of the design, “described” in the drawings. It is essential that the applicant present a set of drawings (or photographs) of the highest quality which conform to the rules and standards which are reproduced in this guide. Changes to these drawings after the application has been filed, may introduce new matter which is not permitted by law (35 U.S.C. 132). It is in applicant’s best interest to ensure that the drawing disclosure is clear and complete prior to filing the application, since an incomplete or poorly prepared drawing may result in a fatally defective disclosure which cannot become a patent. It is recommended that applicant retain the services of a professional draftsperson who specializes in preparing design patent drawings. Examples of acceptable drawings and drawing disclosures are included in this Guide so that applicant will have some idea of what is required and can prepare the drawings accordingly.
In addition to the drawing disclosure, certain other information is necessary. While no specific format is required, it is strongly suggested that applicant follow the formats presented to ensure that the application is complete.
When a complete design patent application, along with the appropriate filing fee, is received by the Patent and Trademark Office, it is assigned an Application Number and a Filing Date. A “Filing Receipt” containing this information is sent to the applicant. The application is then assigned to an examiner. Applications are examined in order of their filing date.
The actual “examination” entails checking for compliance with formalities, ensuring completeness of the drawing disclosure, and a comparison of the claimed subject matter with the “prior art”. “Prior art” consists of issued patents and published materials. If the claimed subject matter is found to be patentable, the application will be “allowed” and instructions will be provided to applicant for completing the process to permit issuance as a patent.
The examiner may reject the claim in the application if the disclosure cannot be understood or is incomplete, or if a reference or combination of references, found in the prior art, shows the claimed design to be unpatentable. The examiner will then issue an Office action detailing the rejection and addressing the substantive matters which effect patentability. This Office Action may also contain suggestions by the examiner for amendments to the application. Applicant should keep this Office action for his or her files, and not send it back to the Office.
If, after receiving an Office action, applicant elects to continue prosecution of the application, a timely reply to the action must be submitted. This reply should include a request for reconsideration or further examination of the claim, along with any amendments desired by the applicant, and must be made in writing. The reply must distinctly and specifically point out the supposed errors in the Office action and must address every objection and/or rejection in the action. If the examiner has rejected the claim over prior art, a general statement by the applicant that the claim is patentable, without specifically pointing out how the design is patentable over the prior art, does not comply with the rules.
In all cases where the examiner has said that a reply to a requirement is necessary, or where the examiner has indicated patentable subject matter, the reply must comply with the requirements set forth by the examiner, or specifically argue each requirement as to why compliance should not be required.
Information source: USPTO.GOV
For more information visit www.uspto.gov
