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1502 Definition of a Design [R-07.2022]

In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). “[35 U.S.C.] 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).

The design for an article consists of the visual characteristics embodied in or applied to an article.

Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.

Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method. See In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed. Cir. 2021) (“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.”); Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334, 1340, 2019 USPQ2d 341902 (Fed. Cir. 2019) (noting “that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se”).

1502.01 Distinction Between Design and Utility Patents [R-07.2022]

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

Some of the more common differences between design and utility patents are summarized below:

  • (A) The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application under 35 U.S.C. 120, 121, 365(c), or 386(c), 20 years from the date on which the earliest such application was filed, while the term of a design patent is 15 years measured from the date of grant, if the design application was filed on or after May 13, 2015 (or 14 years if filed before May 13, 2015). (See 35 U.S.C. 173 as amended under section 102 of the Patent Law Treaties Implementation Act, 126 Stat. at 1531-32).
  • (B) Maintenance fees are required for utility patents (see 37 CFR 1.20), while no maintenance fees are required for design patents.
  • (C) Design patent applications include only a single claim, while utility patent applications can have multiple claims.
  • (D) Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications (see MPEP § 803), while it is mandatory in design patent applications (see MPEP § 1504.05).
  • (E) An international application designating various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT), whereas an international design application designating various countries may be filed for design protection under the Hague Agreement.

    See MPEP Chapter 2900 for international design applications.

  • (F) Foreign priority under 35 U.S.C. 119(a)-(d) can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications (see 35 U.S.C. 172).
  • (G) Utility patent applications may claim the benefit of a provisional application under 35 U.S.C. 119(e) whereas design patent applications may not. See 35 U.S.C. 172 and 37 CFR 1.78(a)(4) .
  • (H) A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)).
  • (I) Continued prosecution application (CPA) practice under 37 CFR 1.53(d) is only available for design applications filed under 35 U.S.C. chapter 16 (see 37 CFR 1.53(d)(1)).
  • (J) Utility patent applications filed on or after November 29, 2000 are subject to application publication under 35 U.S.C. 122(b)(1)(A), whereas design applications filed under 35 U.S.C. chapter 16 are not subject to application publication (see 35 U.S.C. 122(b)(2)).

Other distinctions between design and utility patent practice are detailed in this chapter and MPEP Chapter 2900 for international design applications. Unless otherwise provided, the rules for applications for utility patents are equally applicable to applications for design patents (35 U.S.C. 171 and 37 CFR 1.151 and 1.1061).



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Last Modified: 02/16/2023 12:58:17