Can you file a design patent application after filing a utility patent application?

Suppose you started with filing a utility nonprovisional patent application. After a couple of years, you’ve had to respond to an Office Action or two. You now realize that perhaps your idea has a unique appearance that might be worthy of design patent protection. Is it too late to file a design patent application?

As long as your nonprovisional patent application is still pending, you can file a design patent application that gets the benefit of your earlier priority date. To accomplish this, your later design filing must include the priority claim discussed below. Also, the drawings in your utility patent application must support the design patent drawings to be filed in your new design application.

Can a design patent application claim priority to a utility nonprovisional application?

Yes, a design patent application may claim priority to a pending utility nonprovisional patent application, but not to a provisional patent application under 35 USC § 172. The drawings in the earlier filed nonprovisional application must adequately support the drawings to be filed in the design application.

If a design patent application claims benefit under 35 USC 120 to a nonprovisional application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application [MPEP 1504.20].

Can a provisional patent application support a later design patent application?

No, a provisional patent application cannot support or serve as the priority for a later filed design patent application. If you have not yet filed a nonprovisional application, then a new design patent application as should be filed soon as possible since it will not get the benefit of your earlier provisional filing date.

Can a utility nonprovisional application claim priority to a design application?

Yes, a nonprovisional utility application may claim priority to a design patent application provided that the design application provides proper support of the nonprovisional application.

As a practical matter, the nonprovisional application will very likely contain new matter relative to the priority design application which will consist primarily of drawings and a bare-bones specification as is typical for design patent applications.

Need help filing a design patent application or utility nonprovisional?

Contact US patent attorney Vic Lin by email or call (949) 223-9623 to discuss your patent filing and what types of priority claims might be available.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 |

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