Can a single design patent application include multiple designs?
You can try, but it probably will not work in most cases. In limited circumstances, you might be able to include multiple designs in a US design patent application. Chances of success seem slim, so be careful. The risk is high that a multi-embodiment design application will ultimately lead to higher costs and more delays. A design patent application with multiple designs might even lead to a permanent loss of rights.
What are the benefits of multiple embodiments in a single design patent application?
One factor for consolidating multiple design embodiments into a single filing is to save costs, both in terms of USPTO fees and attorney’s fees. For a small entity, the USPTO initial filing fees for a design patent application amount to $480. Of course, you have to add any attorney’s fees on top of that, so the savings are not trivial.
Design patents do have any renewals or maintenance fees, so there are no additional post-registration savings in terms of having one granted design patent versus multiple design patents.
What are the risks of multiple embodiments in a single design patent application?
The primary risk in a multi-embodiment design patent application is that the patent examiner will find multiple inventions. This means that the examiner thinks the multiple embodiments contain more than one patentably distinct design [see MPEP 1504.05]. Accordingly, the examiner will issue a Restriction Requirement, thereby forcing the applicant to pick a particular embodiment.
Potentially higher costs in the long run
If the examiner sends a Restriction Requirement, the applicant will likely incur the following costs:
- Filing a response to pick a particular design (usually attorney’s fees only if filed by the extension-free deadline); and
- Filing a divisional application to pursue the non-elected design, which will involve USPTO fees and any attorney’s fees.
Delay in patent grant
Design patent applications in the US have a high allowance rate of approximately 84%. Therefore, there is a strong probability that a single-embodiment design application would proceed from initial filing straight to an allowance without ever receiving an Office Action.
By increasing the probability of an Office Action (i.e., Restriction Requirement) due to multiple designs in a single application, an applicant risks the delay of an allowance on the first design as well as any additional designs.
Abandonment of non-elected designs to public domain
Incorporating multiple embodiments in a single design patent application carries a greater risk of abandonment of the non-elected designs. The Federal Circuit has held that the removal of an embodiment in response to a Restriction Requirement in a design application will lead to abandonment of the non-elected design to the public domain if the applicant does not pursue the non-elected embodiment in a divisional design application.
Therefore, applicants filing a multi-embodiment design application must be prepared to file divisional applications should the examiner issue a Restriction Requirement.
When would a single design application with multiple designs be appropriate?
Prior to filing, the variations between the designs should first be identified. An assessment should then be made on both the significance of those features and the degree of variation between the embodiments.
For example, it may make sense to combine multiple embodiments in a single design application if:
- the varying features are not significant to the distinctive ornamental appearance of the overall design; and
- the degree of variation between the embodiments are relatively minor.
If the examiner considers the differences between the embodiments to be minor and patentably indistinct, then multiple designs with obvious minor variations may be allowed to proceed in the same application.
What is patentably indistinct?
Embodiments that are patentably indistinct from each other may remain in the same design patent application. To be patentably indistinct, the embodiments must constitute a single inventive concept. If the differences in features are significant to the ornamental appearance, the examiner may take the position that the embodiments are patentably distinct from each other because they do not constitute a single inventive concept.
To show that multiple designs are not distinct:
(A) the multiple designs must have overall appearances with basically the same design characteristics; and
(B) the differences between the multiple designs are insufficient to patentably distinguish one design from the other.
An example of such a minor difference may be one that is obvious to a designer of ordinary skill in the art.
What is a recommended strategy for US design patent protection of multiple designs?
If the variations are significant to the ornamental appearance of the design or the variations are quite different, it may make more sense to concurrently file multiple design patent applications, each containing a single embodiment. This will avoid a Restriction Requirement, thereby leading a quicker allowance and registration.
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