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. Can a design patent application claim priority to a utility patent application? 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]. In other words, the design application will get only the benefit of the nonprovisional filing date, and not the provisional filing date.
Can a design patent application claim priority to a provisional 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 should be filed as 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 patent 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.
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