Design US

Design Protection in US
• A U.S. design patent application primarily consists of a specification and drawings.

• The specification is generally composed of a title, a description, and a claim.
• The drawings are comprised of at least one figure and serve as the claims for the design
patent.
• Title: The title of a design patent application “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.” The title should not be directed to less than the claimed
design shown in the drawings.
• Description: The design patent’s description should be very minimal. An overly narrow
description of the figures may not fully describe the invention and allow products to escape
infringement. Accordingly, the description of the figures should be limited to identifying the
view presented – top plan, bottom plan, front elevation, back elevation, side elevation,
perspective, etc.
• Drawings: The drawings are the most important part of a design patent because they truly
constitute the claim that may be enforced against infringers. The most common
rejection/objection an application typically encounters during design patent application
prosecution will be directed to the quality of the drawings, or that they do not sufficiently
disclose the claimed article or portion thereof, and thus do not comply with 35 U.S.C. §112.
35 U.S.C. 171 PATENTS FOR DESIGNS.
• (a) IN GENERAL.—Whoever invents any new, original, and
ornamental design for an article of manufacture may
obtain a patent therefor, subject to the conditions and
requirements of this title.
• (b) APPLICABILITY OF THIS TITLE.—The provisions of this
title relating to patents for inventions shall apply to patents
for designs, except as otherwise provided.
• (c) FILING DATE.—The filing date of an application for
patent for design shall be the date on which the
specification as prescribed by section 112 and any required
drawings are filed.
• Requirements
• Design patent applications are examined under the same
rules as utility patent applications –
• patentable subject matter under 35 U.S.C. §171 (35
U.S.C. §101 for utility patent applications),
• novelty under 35 U.S.C. §102,
• obviousness under 35 U.S.C. §103, and
• definiteness under 35 U.S.C. §112
– – substantive rejections under novelty and obviousness
rationales are less common. The most common rejection an
applicant will encounter will relate to drawing quality and
completeness.
Duration
• The term of U.S. design patents was 14 years,
but the term of design patents stemming from
applications filed after May 13, 2015, is 15
years.
• Design patents, unlike utility patents, do not
require a periodic maintenance fee.
• 37 CFR 1.153 Title, description and claim, oath or declaration
(for applications filed on or after September 16, 2012).
• (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.
Arrangement of application elements in a design application.
• (a) The elements of the design application, if applicable, should appear in the following order:
– (1) Design application transmittal form.
– (2) Fee transmittal form.
– (3) Application data sheet
– (4) Specification.
– (5) Drawings or photographs.
– (6) The inventor's oath or declaration
• (b) The specification should include the following sections in order:
– (1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature
and intended use of the article in which the design is embodied.
– (2) Cross-reference to related applications (unless included in the application data sheet).
– (3) Statement regarding federally sponsored research or development.
– (4) Description of the figure or figures of the drawing.
– (5) Feature description.
– (6) A single claim.
• (c) The text of the specification sections defined in paragraph (b) of this section, if applicable,
should be preceded by a section heading in uppercase letters without underlining or bold type.
Computer-Generated Icons
• Computer-generated icons, such as full screen

displays and individual icons, are 2-dimensional
images which alone are surface ornamentation.
– ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. &
Int. 1992)
• The USPTO considers designs for computer-
generated icons embodied in articles of
manufacture to be statutory subject matter
eligible for design patent protection
• Thus, if an application claims a computer-generated icon
shown on a computer screen, monitor, other display
panel, or a portion thereof, the claim complies with the
“article of manufacture” requirement of 35 U.S.C. 171.
• Examination
– whether the design is embodied in an article of manufacture.
– Review the drawing to determine whether a computer screen,
monitor, other display panel, or a portion of any of those
articles, is shown
– Review the title to determine whether it clearly refers to the
claimed subject matter.
• The following titles do not adequately describe a
design for an article of manufacture
– “computer icon”; or “icon.”
• On the other hand, the following titles do adequately
describe a design for an article of manufacture
– “computer screen with an icon”;
– “display panel with a computer icon”;
– “portion of a computer screen with an icon image”;
– “portion of a display panel with a computer icon image”; or
– “portion of a monitor displayed with a computer icon image.
TREATMENT OF TYPE FONTS
• Traditionally, type fonts have been generated by solid
blocks from which each letter or symbol was produced.
• Consequently, the USPTO has historically granted
design patents drawn to type fonts.
• USPTO personnel should not reject claims for type fonts
for failure to comply with the “article of manufacture”
requirement on the basis that more modern methods
of typesetting, including computer-generation, do not
require solid printing blocks
CHANGEABLE COMPUTER GENERATED
ICONS
• Computer generated icons including images that change in appearance during viewing
may be the subject of a design claim.
• Such a claim may be shown in two or more views. The images are understood as viewed
sequentially, no ornamental aspects are attributed to the process or period in which one
image changes into another.
• A descriptive statement must be included in the specification describing the transitional
nature of the design and making it clear that the scope of the claim does not include
anything that is not shown. Examples of such a descriptive statement are as follows:
• “The subject matter in this patent includes a process or period in which an image changes
into another image. This process or period forms no part of the claimed design;” or
• “The appearance of the transitional image sequentially transitions between the images
shown in Figs. 1-8. The process or period in which one image transitions to another image
forms no part of the claimed design;” or
• “The appearance of the transitional image sequentially transitions between the images
shown in Figs. 1-8. No ornamental aspects are associated with the process or period in
which one image transitions to another image
REJECTIONS MADE UNDER 35 U.S.C. 171
• Rejections under 35 U.S.C. 171 for lack of ornamentality

based on a proper prima facie showing fall into two
categories:
• (A) a design visible in its ultimate end use which is
primarily functional based on the evidence of record; or
• (B) a design not visible in its normal and intended use as
evidence that its appearance is not a matter of concern.
– See In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949); In
re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed.
Cir. 1990).
• In order to overcome this rejection, two types of evidence are needed:
• (1) Evidence to demonstrate there is some period in the commercial life of
the article embodying the claimed design when its ornamentality is a matter
of concern. Such evidence may include a showing of a period in the life of the
design when the ornamentality of the article may be a matter of concern to a
purchaser during the process of sale.
• An example of this type of evidence is a sample of sales literature such as an
advertisement or a catalog sheet which presents the appearance of the
article as ornamental and not merely as a means of identification or
instruction; and
• (2) Evidence to demonstrate the design is ornamental. This type of evidence
should demonstrate “thought of ornament” in the design and should be
presented in the form of an affidavit or declaration under 37 CFR 1.132 from
the applicant:
• (a) stating the ornamental considerations which entered into the design of
the article; and
• (b) identifying what aspects of the design meet those considerations.

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Design Protection in US

• A U.S. design patent application primarily consists of a specification and drawings.

• Computer-generated icons, such as full screen

• Rejections under 35 U.S.C. 171 for lack of ornamentality

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