Is It Too Late to File a Design Patent on a Product Sold or Shown to the Public?
US patent laws are forgiving, but only to an extent. You have one year from the earliest date of public disclosure to apply for US patents. If you are thinking of getting a design patent on a product you’ve already sold, expect additional costs and delays in the patent process.
Need a design patent on a product already sold? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
Expect a Rejection Based On Your Ecommerce Listing or YouTube Video
If your product has been sold online on an ecommerce platform such as amazon.com, expect the design patent examiner to find your product listing. USPTO design patent examiners have become quite skilled at finding online listings showing products that are identical or highly similar to the drawings shown in design patent applications.
Furthermore, design examiners will also look for YouTube videos showing your product.
Don’t be discouraged when the examiner sends an Office Action rejecting your design patent application based on your own public disclosure. There is a way to overcome the rejection.
How to Respond to Design Office Action Citing Your Own Prior Art
Suppose you have been selling your product on Amazon for less than a year, and you filed a design patent application on your product. You may receive an Office Action where the examiner is rejecting your design patent application based on your Amazon listing. How do you respond?
Initially, check the Office Action for the citation of your product listing as a prior art reference and note the date of public disclosure. Make sure the date of cited reference is not more than one year prior to your filing date.
Assuming that is the case, you can then respond to the Office Action with a proper affidavit stating that the cited prior reference consists of your own public disclosure.
How Strong is the 1-year Grace Period Argument?
Your affidavit should specify how the cited prior art reference was made by you within one year prior to the filing date of your design patent application. With a properly worded affidavit, your response should be able to remove your own public disclosure as a prior art reference.
Assuming no other obstacles, an effective affidavit should lead to an allowance of your design patent application.
What If a Third Party Sold Products Similar to Yours?
Suppose after you launched your product listing on amazon.com, third parties start selling copycat products and the examiner cites a product listing by someone else. In these situations, you can submit an affidavit stating that your public disclosure was made within one year prior to the filing date, and that the cited prior art reference got their subject matter from your disclosure.
Best Practice: File US Design Patents Before Your Products Are Sold or Shown to Public
The tradeoff between patent protection and timing is understandable. Many sellers do not want to invest in patent protection unless and until a product sells well. Waiting for market confirmation or proof-of-concept before filing design patents can save some money.
The drawback will be the additional cost of obtaining design patents for products already in the public. Filing later will incur the risk of others possibly filing before you and the additional cost of responding to rejections. You may still get your design patent, but expect more costs and a longer timeframe.
