Design patents are provided for in 35 U.S.C. chapter 16. In addition, international design applications filed under the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement") are provided for in 35 U.S.C. chapter 38. Certain statutory provisions in 35 U.S.C. chapter 38 provide for the applicability of the provisions of 35 U.S.C. chapter 16 to international design applications. See 35 U.S.C. 382(c), 383, and 389(b). See MPEP Chapter 2900 for additional information concerning international design applications.
The right to a patent for a design stems from:
For design applications filed under 35 U.S.C. chapter 16:
The rules relating to applications for patents for other inventions or discoveries are also applicable to applications for patents for designs except as otherwise provided.
For international design applications designating the United States:
Other rules relating only to design applications, such as 37 CFR 1.152 -1.155 and those contained in 37 CFR Part 1, Subpart I, are reproduced in the sections of this chapter and in MPEP Chapter 2900, as appropriate.
It is noted that design patent applications are not included in the Patent Cooperation Treaty (PCT), and the procedures followed for PCT international applications are not to be followed for design patent applications.
The practices set forth in other chapters of this Manual of Patent Examining Procedure (MPEP) are to be followed in examining applications for design patents, except as particularly pointed out in this chapter or in MPEP Chapter 2900. Also, with respect to international design applications that designate the United States, 35 U.S.C. 389(b) provides that "[a]ll questions of substance and, unless otherwise required by the treaty and Regulations, procedures regarding an international design application designating the United States shall be determined as in the case of applications filed under chapter 16." Accordingly, many of the practices set forth in this chapter, such as those pertaining to examination in MPEP § 1504, are applicable to international design applications that designate the United States. Differences in practices are noted in this chapter where applicable.
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").
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:
See MPEP Chapter 2900 for international design applications.
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 ).
This section sets forth the elements of a design application filed under 35 U.S.C. chapter 16. Elements of an international design application are set forth in MPEP Chapter 2900, though reference to international design applications that designate the United States is included in this section where appropriate.
A design patent application has essentially the elements required of an application for a utility patent (see Chapter 600). The arrangement of the elements of a design patent application filed under 35 U.S.C. chapter 16 and the sections of the specification are as specified in 37 CFR 1.154.
A claim in a specific form is a necessary element of a design patent application. See MPEP § 1503.01, subsection III.
A drawing is an essential element of a design patent application. See MPEP § 1503.02 for requirements for drawings.
(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
(b) The inventor's oath or declaration must comply with the requirements of § 1.63, or comply with the requirements of § 1.64 for a substitute statement.
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(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
(b) The oath or declaration required of the applicant must comply with § 1.63.
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The following order or arrangement should be observed in framing a design patent specification:
Do not use this form paragraph in an international design application.
A preamble, if included, should state the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article in which the design is embodied (37 CFR 1.154 ).
The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim. See MPEP § 1504.04, subsection I.A. See Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334, 1340, 2019 USPQ2d 341902 (Fed. Cir. 2019) ("[I]dentifying the article of manufacture serves to notify the public about the general scope of protection afforded by the design patent"). The title may be directed to the entire article embodying the design while the claimed design shown in full lines in the drawings may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design shown in full lines in the drawings. A title descriptive of the actual article aids the examiner in developing a complete field of search of the prior art and further aids in the proper assignment of new applications to the appropriate class, subclass, and patent examiner, and the proper classification of the patent upon allowance of the application. It also helps the public in understanding the nature and use of the article embodying the design after the patent has been issued. For example, a broad title such as "Adapter Ring" provides little or no information as to the nature and intended use of the article embodying the design. If a broad title is used, the description of the nature and intended use of the design may be incorporated into the preamble. Absent an amendment requesting deletion of the description, it would be printed on any patent that would issue.
When a design is embodied in an article having multiple functions or comprises multiple independent parts or articles that interact with each other, the title must clearly define them as a single entity, for example, combined or combination, set, pair, unit assembly.
Since 37 CFR 1.153 requires that the title must designate the particular article, and since the claim must be in formal terms to the "ornamental design for the article (specifying name) as shown, or as shown and described," the title and claim must correspond. When the article named in the title does not correspond to the article named in the claim, the examiner should object to the inconsistency under 37 CFR 1.153 and require correction.
However, it is emphasized that, under 35 U.S.C. 112(b) , the claim defines "the subject matter which the inventor or joint inventor regards as the invention" (emphasis added); (or for applications filed prior to September 16, 2012, under the second paragraph of pre-AIA 35 U.S.C. 112 the claim defines "the subject matter which the applicant regards as his invention"), that is, the ornamental design to be embodied in or applied to an article. Thus, the examiner should afford the applicant substantial latitude in the language of the title/claim. The examiner should require amendment of the title/claim if the language is clearly misdescriptive, inaccurate, or unclear (i.e., the language would result in a rejection of the claim under 35 U.S.C. 112(b), (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, second paragraph); see MPEP § 1504.04, subsection II). The use of language such as "or the like" or "or similar article" in the title when directed to the environment of the article embodying the design will not be the basis for a rejection of the claim under 35 U.S.C. 112(b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph). However, such language is indefinite when it refers to the area of articles defining the subject matter of the design. An acceptable title would be "door for cabinets, houses, or the like," while the title "door or the like" would be unacceptable and the claim will be rejected under 35 U.S.C. 112(b), (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, second paragraph). Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). See also MPEP § 1504.04; subsection II.
Amendments to the title, whether directed to the article in which the design is embodied or its environment, must have antecedent basis in the original disclosure and may not introduce new matter. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title is directed to the environment in which the design is used and the amendment would introduce new matter, the examiner should object to the amendment under 35 U.S.C. 132. If an amendment to the title is directed to the article in which the design is embodied and the amendment would introduce new matter, in addition to the objection under 35 U.S.C. 132, the claim must be rejected under 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, the first paragraph of pre-AIA 35 U.S.C. 112 ).
Any amendment to the language of the title should also be made at each occurrence thereof throughout the application, except in the oath or declaration. If the title of the article is not present in the original figure descriptions, it is not necessary to incorporate the title into the descriptions as part of any amendment to the language of the title.
The practice set forth above regarding the title of the design is generally applicable to international design applications designating the United States. The requirement for a title in an international design application designating the United States is set forth in 37 CFR 1.1067 and corresponds to the requirement set forth in 37 CFR 1.153. See MPEP § 2920.04(a).
The title of a design must designate the name of the article in which the design is embodied or applied to. In addition, the title must correspond with the claim. See MPEP § 1503.01 and 37 CFR 1.153 or MPEP § 2920.04(a) and 37 CFR 1.1067.
For [1], the title, and each occurrence of the language of the title, [2] amended throughout the application, original oath or declaration excepted, to read: [3]
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --has been--.
3. When the applicant has furnished the application title, applicant's authorization is required to make an examiner’s amendment to the application title. See MPEP § 1302.04. Where the changes are made by examiner's amendment, this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01.
No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). While not required, such a description is not prohibited and may be incorporated, at applicant’s option, into the specification or may be provided in a separate paper. Ex parte Spiegel, 1919 C.D. 112, 268 O.G. 741 (Comm’r Pat. 1919). Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views.
A "characteristic features" statement describing a particular feature of novelty or nonobviousness in the claimed design may be permissible in the specification. Such a statement should be in terms such as "The characteristic feature of the design resides in [1]," or if combined with one of the Figure descriptions, in terms such as "the characteristic feature of which resides in [2]." While consideration of the claim goes to the total or overall appearance, the use of a "characteristic feature" statement may serve later to limit the claim (McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 USPQ 242 (S.D.N.Y. 1980)).
In brackets 1 and 2, insert brief but accurate description of the feature of novelty or nonobviousness of the claimed design.
The inclusion of a feature statement in the specification is noted. However, the patentability of the claimed design is not based on the specified feature but rather on a comparison of the overall appearance of the design with the prior art. In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).
Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications.
The descriptive statement included in the specification is impermissible because [1]. See MPEP § 1503.01, subsection II. Therefore, the description should be canceled as any description of the design in the specification, other than a brief description of the drawing, is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description.
In bracket 1, insert the reason why the descriptive statement is improper.
For [1], the figure descriptions [2] amended to read: [3]
1. In bracket 1, insert reason.
2. In bracket 2, insert --should be-- or --have been-.
3. In bracket 3, insert amended text.
4. Applicant's authorization is required to make an examiner’s amendment to the figure descriptions, and this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. See MPEP § 1302.04. If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01.
For [1], the description(s) of Fig(s). [2] [3] amended to read: [4]
1. In bracket 1, insert reason.
2. In bracket 2, insert selected Figure descriptions.
3. In bracket 3, insert --should be-- or --have been-.
4. In bracket 4, insert amended text.
5. Applicant's authorization is required to make an examiner's amendment to the figure descriptions, and this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. See MPEP § 1302.04. If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01.
The application contains at least one color drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color drawings/photographs in design applications, the specification [1] amended to include the following language as the first paragraph of the brief description of the drawings section:
The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.
1. Do not use this form paragraph in an international design application.
2. In bracket 1, insert --must be-- or --has been--.
The requirements for utility claims specified in 37 CFR 1.75 do not apply to design claims. Instead, the form and content of a claim in a design patent application filed under 35 U.S.C. chapter 16 is set forth in 37 CFR 1.153:
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A design patent application may only include a single claim. The single claim should normally be in formal terms to "The ornamental design for (the article which embodies the design or to which it is applied) as shown." The description of the article in the claim should be consistent in terminology with the title of the invention. See MPEP § 1503.01, subsection I.
When the specification includes a proper descriptive statement of the design (see MPEP § 1503.01, subsection II), or a proper showing of modified forms of the design or other descriptive matter has been included in the specification, the words "and described" must be added to the claim following the term "shown"; i.e., the claim must read "The ornamental design for (the article which embodies the design or to which it is applied) as shown and described."
Full lines in the drawing show the claimed design. Broken lines are used for numerous purposes. Under some circumstances, broken lines are used to illustrate the claimed design (i.e., stitching and fold lines). Broken lines are not permitted for the purpose of identifying portions of the claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 907, 153 USPQ 177, 180 (CCPA 1967) (there are "no portions of a design which are ‘immaterial’ or ‘not important.’ A design is a unitary thing and all of its portions are material in that they contribute to the appearance which constitutes the design."). See also MPEP § 1503.02, subsection III.
The form and content of a claim in an international design application designating the United States is set forth in 37 CFR 1.1025, which mirrors the claim requirements set forth in 37 CFR 1.153. See also MPEP Chapter 2900 for international design applications.
For proper form (37 CFR 1.153 or 37 CFR 1.1025 ), the claim [1] amended to read: "[2] claim: The ornamental design for [3] as shown."
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
For proper form (37 CFR 1.153 or 37 CFR 1.1025 ), the claim [1] amended to read: "[2] claim: The ornamental design for [3] as shown and described."
1. In bracket 1, insert --must be-- or --has been--.
2. In bracket 2, insert --I-- or --We--.
3. In bracket 3, insert title of the article in which the design is embodied or applied.
