Reasons for Procuring US Design Patents
Chinese design patent owners will already know the benefits of design patent protection in the US. Unlike US utility patents, a typical US design patent may be obtained more quickly and for less money. The allowance rate of US design applications, particularly upon a first review by the patent examiner (i.e., “first action allowance”), are typically higher than those of utility applications.
While the scope of protection provided by a design patent may be significantly less than that of a utility patent, there may still be value in procuring lesser patent rights more quickly. This would be especially true for patented products with a short lifespan.
Limitations of design patent protection in the US are not much different than those in China – i.e., a US design patent does not protect functional features. Only the ornamental appearance of a product or image is protected in a design patent.
Claiming Priority to Chinese Design Patent Application
If a first design application has already been filed in China (or any other non-US country for that matter), the applicant should be diligent in filing a corresponding US application for the same design within six months of the Chinese filing date. The later-filed US application should include a “priority claim” to the Chinese priority application.
Differences between China and US Design Patent Drawings
Different drawing requirements between US and China patent laws seem to create the most complications in filing counterpart US design applications. While it may be common practice to file the same figures from the priority Chinese design application, doing so may lead to objections by the USPTO, thereby prolonging the prosecution of the US application.
Those Chinese design drawings, however, will certainly omit any surface shading which might be fine so long as the USPTO examiner deems such surface shading unnecessary. It’s likely, however, that the US examiner may issue an Office Action requiring surface shading to determine, for example, the contours of particular surfaces (e.g., flat or curved?).
Also, US design practice allows for broken lines (dashed lines) to help illustrate the context of a design without claiming that context. If the US application is claiming priority to a Chinese application, then this will not be an issue since the drawings in the Chinese application will have only solid lines.
From Solid Lines to Broken Lines
Since China patent laws do not allow for broken lines, all design priority applications originating from China will certainly have only solid lines. If the applicant wants to file a US design application for the same design with a priority claim to the Chinese application, an issue arises when seeking to change solid lines to broken lines.
The issue is not new matter, but compliance with the written description requirement – i.e., whether the inventor at the time of the original priority filing had possession of later claimed design. In most cases, it appears that the USPTO will allow for the broken lines and maintain the priority claim, but each US design patent application with a priority claim will be examined on a case-by-case basis.
This is what MPEP 1504.04 says about this issue:
Issues of compliance with the written description requirement may arise where an amended claim or a claim in a continuing design application (i.e., a later-claimed design) is composed of only a subset of elements of the originally disclosed design. For example, the later-claimed design converts originally-disclosed solid line structure to broken lines or converts originally-disclosed broken line structure to solid lines, but does not introduce any new elements that were not originally disclosed. In the vast majority of such situations, the examiner will be able to determine based on a review of the drawings that the inventor had possession of the later-claimed design at the time of filing the original/earlier application. See Racing Strollers, 878 F.2d at 1420, 11 USPQ2d at 1301 (in discussing the requirements for satisfying 35 U.S.C. 120, the Federal Circuit stated, “As a practical matter, meeting the [written description] requirement of Sec. 112 is, in the case of an ornamental design, simply a question of whether the earlier application contains illustrations, whatever form they may take, depicting the ornamental design illustrated in the later application and claimed therein . . . .”). See also Daniels, 144 F.3d at 1456-1457, 46 USPQ2d at 1790 (finding that “[t]he leecher as an article of manufacture is clearly visible in the earlier design application, demonstrating to the artisan viewing that application that [the inventor] had possession at that time of the later claimed design of that article [alone without the leaf ornamentation claimed in the earlier design application]”). In these situations, no further analysis by the examiner would be necessary with respect to the written description requirement.
In limited situations, however, the examiner will not be able to conclude based on a simple review of the drawings that the inventor had possession of the later-claimed design at the time of filing the original/earlier application. That is, even though elements of the later-claimed design may be individually visible in the original/earlier disclosure (whether shown in solid or broken lines), additional consideration is required by the examiner to determine whether the later-claimed design was reasonably conveyed to the ordinary skilled designer and therefore, supported by the original/earlier disclosure. As with all determinations for compliance with the written description requirement, the examiner should consider what design the original/earlier application — in its totality– would have reasonably conveyed to an ordinary designer at the time of the invention. See Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172 (“[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). See also Owens, 710 F.3d at 1368, 106 USPQ2d at 1252 (citing Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172). If the examiner determines that the later-claimed design was not reasonably conveyed to an ordinary designer by the original/earlier disclosure, the examiner should reject the claim for lack of written description (or when evaluating a priority or benefit claim, the application would not be entitled to the earlier date); see MPEP §§ 201.06(c), subsections III and XII, 602.05, and 1504.20).
To reduce the risk of having the priority claim rejected, it may be worthwhile to file multiple embodiments:
- embodiment(s) with solid lines; and
- embodiment(s) with broken lines.
Certified Copy of Design Priority Application
A certified copy of the foreign priority document must be filed during the pendency of the design application (i.e. before the design patent issues). AIA did not change the deadline for submitting a copy of the priority application in design applications because post-AIA Rule 37 CFR § 1.55(f) specifically excludes design applications, stating the “time period in this paragraph does not apply in a design application.” The purpose of new Rule 55(f) was to require utility patent applicants to submit a certified copy of the foreign priority application within 16 months of the filing date of the foreign priority application (aka “priority date”) since a published utility application can serve as prior art as of the priority date.
While a certified copy of the priority application may be filed after payment of the issue fee, doing so will cause the design patent to be granted without the priority claim unless corrected by a certificate of correction [see 37 CFR § 1.55(g)]. Therefore, it’s best practice to file the certified copy of the design priority application by the time the issue fee is paid.
No Publication of US Design Application
US design patent applications are not published, so there is no such thing as a prior art design patent publication.
Average Pendency of Design Applications
The average pendency to a first Office Action in a design application is approximately 13 months as of the time of the date of this post, while total pendency of design applications averaged about 19.3 months.
Allowance Rate of Design Applications
In 2017, the USPTO design allowance rate was 84%.
Duty of Disclosure
Unlike most countries, the US imposes a duty to upon applicants to disclose all known relevant prior art in all US patent applications, including design applications. Therefore, any prior art cited in the prosecution of the counterpart Chinese application should be disclosed to US patent counsel for submitting to the USPTO in an Information Disclosure Statement (IDS).
No Annuities or Renewals
US design patents do not require any renewals, annuities or maintenance fees.
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