What Is A Design Patent Office Action?
Design patent applications are generally easier to obtain than utility patents. In fact, the probability of getting a design patent application allowed is 85% as of the time of this post. Yet, the path to an allowance is not always smooth. You may encounter obstacles along the way, and those obstacles can come in a form of a letter from the USPTO examiner called an Office Action. Here is what you might expect when responding to a design patent Office Action.
Need to respond to a design patent Office Action? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
Design Patent Office Action: Minor Issues
Minor issues in a design patent application often relate to the drawings. For example, the design examiner might find that certain views are inconsistent. A structure shown in one figure appears different in another figure.
An Office Action might also include objections to certain details in the figures where portions of the claimed design are difficult to discern. In such cases, the design exaiminer may give the applicant the option to submit replacement drawings where those portions can be drawn in broken lines.
How Costs Can Significantly Increase In A Design Patent Application
Costs can substantially increase when you need to respond to a prior art rejection in a design patent Office Action. Typically, the examiner can find two types of prior art in design applications:
- Third party prior art references; and
- Your own prior art references.
Third party prior art references may comprise patents or non-patent literature (NPL) by others. For example, the examiner may find third party NPL references such as online product listings showing a similar design.
If the examiner believes your claimed design looks similar to what is shown in the prior art references, it may be difficult to overcome this rejection unless you can show those third parties actually got their designs from you.
While rejections based on third party prior art are uncommon, they do happen from time to time. Examiners might even use a combination of multiple prior art references to form an obviousness rejection.
Arguing Against Your Own Prior Art
It has become increasingly common for examiners to find prior art made by applicants themselves. For example, suppose you sold products with your new design on Amazon before filing your design patent application. There is a good chance an examiner will find your Amazon product listing and use it to reject your design patent application.
The critical question is whether the earliest date of past sales or public disclosure was less than one year before the filing date of your design patent application.
1-Year Grace Period for US Patent Applications
Unlike most foreign countries, US patent law provides applicants with a one-year grace period for applying for US patents on any inventions previously sold or publicly shown. So it is not too late to file a US design patent application on your product as long as your earliest date of sale or public disclosure was less than a year ago.
That being said, expect that you will receive an Office Action with a rejection based on your own prior art. In response, our firm has successfully prevailed against such rejections by preparing a special affidavit for inventors to sign.
While we cannot guarantee results, we have been able to overcome rejections based on the applicant’s own prior sales and disclosures when it was clear that the prior art reference originated from the applicant.
Such strategic responses, however, will add to the overall cost of obtaining a design patent.
