What is a design patent continuation application?
US patent law allows an applicant to file a “child” patent application while the “parent” application is still pending. This means that while a pending patent application (parent) has not yet been granted or abandoned, a continuing application (child) may be filed. This rule applies to both utility and design patent applications. So it is possible to file a design patent continuation application as long as the parent application is still pending.
Can a child design patent application claim priority to a parent utility application?
Yes, you can file a child design patent application based on a parent utility nonprovisional application. In other words, design patent continuations are not limited to only parent design applications. Be careful though. Any parent application must provide sufficient support for a child application pursuant to 35 USC 120.
So if you plan to file a design patent continuation claiming priority to only a utility parent application, make sure the parent utility application provides sufficient support for the drawings in the design application.
What is not allowed in a continuing design patent application?
There is a subtle nuance that may get overlooked in filing a design patent continuation. That nuance has to do with the inventor “possessing” the invention at the time of filing the parent application. This is different than the issue of support.
You can compare the child design patent drawings to the disclosure of a parent application, and argue that support can be found in the parent application. And you might be right in that something in the parent application arguably supports the drawings shown in your child design application. However, have you made any changes in the design application that would give rise to the argument that you did not possess this new claimed invention at the time of filing your parent application.
Let’s look at an example of a new matter design application. In In Re Owens, a parent design patent application disclosed and claimed the entirety of a bottle. The applicant filed a design patent continuation where the drawings now showed certain portions of the bottle in broken lines. In other words, the parent design patent application claimed the whole bottle while the child design application claimed a portion of the bottle.
The court held that this was an impermissible change that broke the priority claim to the parent application. The reasoning behind this decision was that the inventor did not possess the invention of a portion of the bottle at the time of filing the parent application which claimed the entire bottle.
Is it OK to remove matter in a child design application?
In In Re Daniels, the parent design application claimed a leech capturing device with a graphic design of a leaf on its surface. In the design patent continuation, the leaf ornamentation was removed from the three-dimensional structure of the device. This removal of 2-dimensional artwork from a 3-dimensional structure was held permissible.
So the lessons here seem to instruct us to extra careful when converting solid lines in a parent application to broken lines in a child design patent application. If you’re going give this a try, be prepared to show how the inventor possessed the invention of a portion of the overall structure at the time of filing the parent application. If a child design application involves the omission or removal of a two-dimensional graphic from a three-dimensional structure, you might have more leeway.
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