How To File A US Design Patent Based On Foreign Priority

What is the filing deadline for a US design patent based on a foreign priority application?

When it comes to filing related patent applications across different countries, filing dates are critical. A US design patent application must be filed within six months of your foreign priority date.

If the delay past the 6-month deadline is unintentional, an applicant might be able to file a late US design application with a priority claim by the 8-month date from the foreign priority date.

If more than 8 months have passed from the priority date or the applicant is unable to declare unintentional delay, the applicant might still be able to file a US patent application within a 1-year grace period of the earliest public disclosure of the claimed invention. This means that if the foreign priority application has been published for less than one year, the applicant might be able to file a US patent application without a priority claim.

Government fees: Does the applicant company have less than 500 employees?

US government fees are based on the size of the applicant. Individual inventor applicants and academic institutions qualify as small entity for reduced USPTO patent filing fees. If the applicant is a company, then make sure that the total number of employees is less than 500 in order to qualify as a small entity. Keep in mind that this employee count includes any affiliates.

What is the cost to file a US design patent application with a priority claim?

Here is a breakdown of the initial filing fees if you are providing acceptable design drawings from the priority design application:

  • $770 flat rate attorney fee, including priority claim; plus
  • $510 USPTO fee for small entity or $1,020 for a large entity

Total initial filing costs are $1,280 for a small entity and $1,790 for a large entity, assuming you can provide acceptable design patent drawings which require no illustrator revisions.

If formal drawings are required, then total initial filing costs will be approximately $1,505 for a small entity and $2,015 for a large entity.

If you have multiple design patent applications to file, please contact me to discuss volume discounts.

US Design Patent Checklist: What information do we need for the initial filing?

Here is a helpful checklist for the initial filing of a US design patent application:

  • details of priority application, including country, filing date, application number, title;
  • details of applicant(s), including whether or not they qualify as a small entity or large entity;
  • name and address of each inventor;
  • copy of drawings;
  • description of views;
  • DAS code (digital access code) to avoid need for obtaining certified copy of priority application; and
  • any known prior art references material to patentability.

To speed up the design patent process, a request to expedite the examination may be filed with or after the initial filing. As discussed below, you will need to add a couple more items to the checklist.

Can you speed up the design patent examination process?

Yes, you can file a Rocket Docket request which may save several months in the examination process. The two main requirements are:

  1. Additional USPTO fees ($800 for a small entity); and
  2. Preexamination search.

Applicants seeking an expedited design examination must file an IDS citing the prior art references found in the preexamination search. The request form will also require an identification of prior art classes and subclasses.

The cost of a Rocket Docket request is an additional $2,300 for a small entity or $1,900 for a micro entity.

If a prior art search has already been conducted by a foreign patent office for the priority application, we can skip a new search and, therefore, reduce the Rocket Docket cost to $1,300 for a small entity or $900 for a micro entity. So if your priority application has already received a search or will undergo examination soon, consider filing a Rocket Docket request after the seach of your priority application has been completed.

Do you have to tell the USPTO about known prior art?

Yes, the USPTO imposes an obligation on all patent applicants to disclose to them any known prior art that is material to the patentability of the claimed invention. This applies to U.S. utility nonprovisional applications and design applications.

Therefore, foreign applicants who plan to file a US patent application must be prepared to identify all prior references that arose in the examination of the foreign priority application. We prefer to file this Information Disclosure Statement (IDS) with the initial filing.

How is the US design patent process different?

Of all the particular rules surrounding US design filings, the one issue that can trap the unwary relates to the drawings. The USPTO has strict requirements regarding design patent drawings, such as surface shading. Here’s a link to the USPTO Design Patent Application Guide.

In contrast, certain foreign patent offices do not require or even allow surface shading. China, for example, does not allow for any surface shading on design filings. This creates an issue when a priority China application is about to be filed as a US design patent application with a priority claim.

Keep in mind that the USPTO does not require any payment of annuities for pending applications. Also, US design applications do not get published unless and until they are granted.

Need to file a US design patent application based on foreign priority?

Reach out to US patent attorney Vic Lin by email or call (949) 223-9623 to see how we can help file your US design patent applications with proper foreign priority claims and drawings. Minimizing issues upfront can lead to a smoother path to allowance and grant.

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