Mission Impossible: Can you block a design patent application?
Design patent applications are not publicly viewable. It can be nearly impossible to figure out what design patent applications are pending. Suppose your competitor indicates that their product is patent-pending. If they filed a design patent application, you won’t be able to see it unless and until the design patent is granted. And if you can’t see it, how will you block it? So how do you challenge a design patent application?
Technically, any third party can file a preissuance submission against a design patent application if it’s not too late. There is no requirement that a patent application must first be published before a third-party submission can be filed against it. So it is possible to oppose a design patent application by submitting prior art. But, it won’t be easy.
Mission #1: Find the design patent application number
This will be tricky. Since design patent applications are not published, you must somehow get your hands on something like a USPTO filing receipt. A filing receipt will identify the Confirmation Number, which is required to file the prior art submssion electronically.
Has the applicant marked their product packaging or product literature with a patent application number? It’s a long shot, but worth checking out.
Mission #2: Figure out their claimed design
Realistically, this task involves a bit of conjecture and deducement. Unless the applicant or an insider gives you their patent drawings, you’ll have to figure our their claimed design on your own. Suppose a patent-pending product does not seem to have any unique functional features. There is a good probability, therefore, that the visual appearance of the product is the subject of a pending design patent application.
If the product has unique functional features, you might try searching for utility patent publications. A lack of any utility patent publications may further support the hunch that they filed a design patent application. Of course, it’s also possible that a utility patent application was filed with a nonpublication request.
Mission #3: Find relevant prior art
Assuming that you have a fairly accurate sense of what design they are trying to patent, you will need to find prior art references that show a similar design. Each prior art reference must precede their application filing date.
Mission #4: File a Preissuance Submission Before It’s Too Late
A preissuance submission must be filed before the patent application has been allowed. Assuming an allowance has not yet occurred, the submission must also be filed before a first Office Action is issued.
Here’s the problem. Unless you have inside information, you will not know if or when an Office Action has been issued in a design patent application. So you’re taking a gamble that your preissuance submission might be too late and, therefore, ignored. The sooner you file, the better.
Backup Plan: Request Reexamination
Let’s assume your preissuance submission is not considered by the USPTO who proceeds to grant their design patent. Consider filing a request for reexamination. USPTO fees are high, but a streamlined request at 40 pages or less will reduce the government fee by half.