Design patent divisional application: when do you need it?

Though it does not happen often, a design patent application may occasionally be filed with multiple designs, known as embodiments. The hope of the applicant is that design application will issue with all designs, thereby saving some money. Unfortunately for the applicant, design patent examiners tend to issue Restriction Requirements when they encounter multiple designs in a single application. The applicant must elect only one embodiment. The non-elected embodiments will be deleted from the application unless the applicant can successfully convince the examiner that the multiple embodiments are patentably indistinct. So a Restriction Requirement in a design patent application will trigger the need for a divisional application.

When must a design divisional application be filed?

The divisional patent application must be filed while the parent application is still pending (i.e., before abandonment or grant). A prudent time to file a divisional application may prior to or around the time of the allowance of the parent application. If you are certain that you do not wish to abandon the non-elected embodiments, file the divisional application as soon as you elect the embodiment in the parent application. Why wait and cause unnecessary delay in the divisional application?

What are downsides of not filing divisional applications?

If a Restriction Requirement has been issued in a design patent application, the negative consequence of not filing a divisional application is that the non-elected embodiments will be surrendered to the public domain. The applicant will not have a second chance to obtain a design patent on those embodiments which were not chosen in response to the restriction.

Ultimately, it may be more cost-effective to file a separate design patent application for each embodiment. This 1-to-1 approach avoids the delays and costs associated with responding to a Restriction Requirement. Filing divisional applications at a later time also delays examination of the non-elected embodiments.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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