Design Patent

How To File For A Design Patent

Forms

Unfortunately, there are no premade or online forms available to use for the specification and drawings needed for a design patent. The rest of this tutorial will help you create and format your application.

However, there are forms that must accompany your application and they are the: Design Patent Application Transmittal, Fee Transmittal, Oath or Declaration, and an Application Data Sheet.

See - Forms & Things For Design Patents

All Patent applications follow a format derived from the patent laws and regulations. The application is a legal document and you should review and reference these materials.

Hot Tip

It will be a lot easier for you to understand the following instructions on how to apply for a design patent if you read a few issued design patents first. Please take a look at Design Patent D436,119 as an example before proceeding. This example includes the front page and three pages of drawing sheets.

Writing Your Specification - Choice One - Begin with an Optional Preamble

A preamble (if included) should state the name of the inventor, the title of the design, and a brief description of the nature and intended use of the invention that the design is connected to.

All the information contained in the preamble will be printed on the patent if it is granted.

  • Example: Using an Optional Preamble
    I, John Doe, have invented a new design for a jewelry cabinet, as set forth in the following specification. The claimed jewelry cabinet is used to store jewelry and could sit on a bureau.

    Writing Your Specification - Choice Two - Begin with a Single Claim

    You may choose not to write a detailed preamble in your design patent application, however, you must write one claim. Design Patent D436,119 uses a single claim. You will submit all bibliographic information such as the inventor's name by using an application data sheet or ADS. An ADS is the common method for submitting bibliographic data about a patent application.

    • Example: Using a Single Claim
      The ornamental design for eyeglasses, as shown and described.

    Writing the Single Claim

    All design patent application may only include a single claim. The claim defines the design which applicant wishes to patent. The claim must be written in formal terms. The ornamental design for [fill in] as shown.

    What you "fill in" should be consistent with the title of your invention, it is the object which the design has been applied to or embodied in.

    When there is a properly included special description of the design in the specification, or a proper showing of modified forms of the design, or other descriptive matter has been included in the specification, the words and described should be added to the claim following the term shown.

    The ornamental design for [fill in) as shown and described.

    Choosing the Title

    The title of the design must identify the invention that the design is connected to by its most common name used by the public. Marketing designations are improper as titles and should not be used.

    A title descriptive of the actual article is recommended. A good title helps the person that is examining your patent know where to/not to search for prior art and helps with the proper classification of the design patent if it is granted. It also helps the understanding of the nature and use of your invention embodying the design.

    • Examples of Titles
      1: Jewelry cabinet
      2: Concealed jewelry cabinet
      3: Panel for a jewelry accessory cabinet
      4: Eyeglasses

    Specification - Include Cross References

    Any cross-references to related patent applications should be stated (unless already included in the application data sheet).

    Specification - State any Federal Research

    Make a statement regarding any federally sponsored research or development if any.

    Specification - Writing the Figure Descriptions of Drawings Views

    The figure descriptions of the drawings included with the application tell what each view represents.

    • Example:
      FIG.1 is a perspective view of eyeglasses showing my new design;
      FIG.2 is a front elevational view thereof;
      FIG.3 is a rear elevational view thereof;
      FIG.4 is a side elevational view, the opposite side being a mirror image thereof;
      FIG.5 is a top view thereof; and,
      FIG.6 is a bottom view thereof.

    Specification - Writing any Special Descriptions (Optional)

    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 drawing is the design's best description. However, while not required, a special description is not prohibited.

    In addition to the figure descriptions, the following types of special descriptions are permissible in the specification:

    1. A description of the appearance of portions of the claimed design which are not illustrated in the drawing disclosure (i.e., “the right side elevational view is a mirror image of the left side”).
    2. Description disclaiming portions of the article not shown, that form no part of the claimed design.
    3. A statement indicating that any broken line illustration of environmental structure in the drawing is not part of the design sought to be patented.
    4. Description denoting the nature and environmental use of the claimed design, if not included in the preamble.

    Specification - A Design Patent Has One Single Claim

    Design patent applications can have only one claim. The claim defines the design which you want to patent and you can only patent one design at a time. The description of the article in the claim should be consistent with the title of the invention.

    • Example of a Title:
      Eyeglasses
    • Example of a Claim:
      The ornamental design for eyeglasses, as shown and described.

      Making The Drawings

      B&W Drawings or Photographs

      The drawing (disclosure) is the most important element of the design patent application.

      Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is very important that the drawing or photograph must be clear and complete, that nothing about your design is left to conjecture.

      The design drawing or photograph must comply with the disclosure requirements of patent law 35 U.S.C. 112. This patent law requires you to fully reveal your invention.

      To meet the requirements, the drawings or photographs must include a sufficient number of views to constitute a complete disclosure of the appearance of the design claimed.

      Drawings are normally required to be in black ink on white paper. However, b&w photographs are permitted subject to Rule 1.84 Standards For Drawings.

      The rule states that you can use a photograph if a photograph is better than an ink drawing to disclose your design. You must apply in writing for an exemption in order to use a photograph with your application.

      Label Photographs

      B&W photographs submitted on double weight photographic paper must have the drawing figure number entered on the face of the photograph.

      Photographs mounted on Bristol board may have the figure number shown in black ink on the Bristol board, proximate the corresponding photograph.

      You Cannot Use Both

      Photographs and drawings must not both be included in the same application. The introduction of both photographs and drawings in a design patent application would result in a high probability of inconsistencies between the corresponding elements on the ink drawings as compared with the photographs. Photographs submitted in lieu of ink drawings must not disclose environmental structure but must be limited to the claimed design itself.

      Color Drawings or Photographs

      The USPTO will accept color drawings or photographs in design patent applications only after you file a petition explaining why the color is necessary.

      Any such petition must include an extra fee, a copy of the color drawings or photographs, and a B&W photocopy that accurately depicts the subject matter shown in the color drawings or photographs.

      When you use color you must also include a written statement placed just before the description of the drawings that says "The file of this patent contains a least one drawing executed in color. Copies of this patent with color drawings will be provided by the United States Patent and Trademark Office upon request and payment of the necessary fee."

      The Views

      The drawings or photographs should contain a sufficient number of views to completely disclose the appearance of the claimed design, for example, front, rear, right and left sides, top and bottom.

      While not required, it is suggested that perspective views be submitted to clearly show the appearance and shape of three-dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective.

      Unneeded Views

      Views that are merely duplicates of other views of the design or that are merely flat and include no ornamental may be omitted from the drawing if the specification makes this explicitly clear. For example, if the left and right sides of a design are identical or a mirror image, a view should be provided of one side and a statement made in the drawing description that the other side is identical or a mirror image.

      If the bottom of the design is flat, a view of the bottom may be omitted if the figure descriptions include a statement that the bottom is flat and unornamented.

      Using a Sectional View

      A sectional view which more clearly brings out elements of the design is permissible, however, a sectional view presented to show functional features, or interior structure not forming part of the claimed design, is neither required nor permitted.

      Using Surface Shading

      The drawing should be provided with the right surface shading which shows clearly the character and contour of all surfaces of any three-dimensional aspects of the design.

      Surface shading is also necessary to distinguish between any open and solid areas of the design. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast.

       

      If the shape of the design is not fully disclosed when you file. Any additions of surface shading after the initial filing may be viewed as new matter. New matter is anything that is added to, or from, the claim, drawings or specification, that was neither shown nor suggested in the original application. The patent examiner will rule that your later additions are part of a new design rather than a missing piece of the original design. (see patent law 35 U.S.C. 132 and patent rule 37 CFR § 1.121)

      Using Broken Lines

      A broken line is understood to be for illustrative purposes only and forms no part of the claimed invented design. The structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is used, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied or applied to that is not considered part of the claimed design.

      When the claim is directed to just surface ornamentation for an article, the article in which it is embodied must be shown in broken lines.

      In general, when broken lines are used, they should not intrude upon or cross the solid lines of the claimed design and should not be heavier or darker than the lines used depicting the claimed design.

      Where a broken line showing of environmental structure must necessarily cross or intrude upon the representation of the claimed design and obscures a clear understanding of the design, such an illustration should be included as a separate figure in addition to the other figures which fully disclose the subject matter of the design. See - Broken Line Disclosure

      The Oath or Declaration

      The oath or declaration required of the applicant must comply with the requirements of patent rule 37 CFR §1.63.

      Fees

      In addition, the filing fee, search fee, and examination fee are also required. For a small entity, (an independent inventor, a small business concern, or a non-profit organization), these fees are reduced by half. As of 2005, the basic filing fee for a design patent for a small entity is $100, the search fee is $50, and the examination fee is $65. Other fees may apply, see USPTO Fees and use the Fee Transmittal Form.

      The preparation of a design patent application and interacting with the USPTO requires knowledge of patent laws and rules and USPTO practices and procedures. If you don't know what you doing, consult a registered patent attorney or agent.

      Good Drawings Are Very Important

      Of primary importance in a design patent application is the drawing disclosure, which illustrates the design being claimed. Unlike a utility patent application, where the "claim" describes the invention in a lengthy written explanation, the claim in a design patent application protects the overall visual appearance of the design, “described” in the drawings.

      You can use the following resources to help you prepare your drawings for your design patent application. Drawings for all types of patents fall under the same rules as far as margins, lines, etc.

      It is essential that you present a set of drawings (or photographs) of the highest quality which conform to the rules and drawing standards. You cannot change your patent drawings after your application has been filed. See - Examples of Acceptable Drawings and Drawing Disclosures.

      You may want to hire a professional draftsperson who specializes in preparing design patent drawings.

      Application Paper Formats

      You can format your application papers (margins, type of paper, etc) the same as you would a utility patent. See - The Correct Style For Application Pages

      All papers which are to become part of the permanent records of the USPTO must be typewritten or produced by a mechanical (or computer) printer.

      The text must be in permanent black ink or its equivalent; on a single side of the paper; in portrait orientation; on white paper that is all of the same size, flexible, strong, smooth, nonshiny, durable, and without holes. The paper size must be either:

      21.6 cm. by 27.9 cm. (8 1/2 by 11 inches), or
      21.0 cm.

      by 29.7 cm. (DIN size A4).
      There must be a left margin of at least 2.5 cm. (1 inch) and top,
      right, and bottom margins of at least 2.0 cm. (3/4 inch).

      Receiving A Filing Date

      When a complete design patent application, along with the appropriate filing fee, is received by the Office, it is assigned an Application Number and a Filing Date. A "Filing Receipt" containing this information is sent to the applicant, do not lose it. The application is then assigned to an examiner. Applications are examined in order of their filing date.

      After the USPTO receives your application for a design patent, they will examine it to make sure that it complies with all the laws and rules that apply to design patents.

      The USPTO will closely check your drawing disclosure and compare the design you have claimed to have invented with prior art. “Prior art” would be any issued patents or published materials that dispute who was first to invent the design in question.

      If your application for a design patent passes the examination, called being “allowed,” instructions will be sen to you as to how to complete the process and get your design patent issued.

      If your application does not pass the examination, you will be sent an "action" or letter detailing why your application was rejected. This letter may contain suggestions by the examiner for amendments to the application. Keep this letter and do not send it back to the USPTO.

      Your Response To Rejection

      You have a limited time to reply, however, you can request in writing that the USPTO reconsiders your application. In your request, you can point out any errors you think the examiner made. However, if the examiner found prior art that disputes you being first with your design that you cannot argue with.

      In all cases where the examiner has said that a reply to a requirement is necessary, or where the examiner has indicated patentable subject matter, the reply must comply with the requirements set forth by the examiner, or specifically argue each requirement as to why compliance should not be required.

      In any communication with the Office, applicant should include the all the following applicable items:

      • Application number
      • Group art unit number (copied from filing receipt or the most recent Office action)
      • Filing date
      • Name of the examiner who prepared the most recent Office action.
      • Title of invention

      If your reply is not received within the designated time period, the application will be considered abandoned.

      To ensure that a time period set for reply to a USPTO action is not missed; a “Certificate of Mailing” should be attached to the reply. This “Certificate” establishes that the reply is being mailed on a given date. It also establishes that the reply is timely, if it was mailed before the period for reply had expired, and if it is mailed with the United States Postal Service. A “Certificate of Mailing” is not the same as “Certified Mail.” A suggested format for a Certificate of Mailing is as follows:

      “I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Box Design, Commissioner for Patents, Washington, D.C. 20231, on (DATE MAILED)”

      (Name - Typed or Printed)

      ––––––––––––––––––––––––––––––––––––––––––

      Signature__________________________________

      Date______________________________________

      If a receipt for any paper filed in the USPTO is desired, applicant should include a stamped, self-addressed postcard, which lists, on the message side applicant's name and address, the application number, and filing date, the types of papers submitted with the reply (i.e., 1 sheet of drawings, 2 pages of amendments, 1 page of an oath/declaration, etc.) This postcard will be stamped with the date of receipt by the mailroom and returned to applicant.

      This postcard will be applicant's evidence that the reply was received by the Office on that date.

      If applicant changes his or her mailing address after filing an application, the Office must be notified in writing of the new address. Failure to do so will result in future communications being mailed to the old address, and there is no guarantee that these communications will be forwarded to applicant's new address. Applicant's failure to receive, and properly reply to these Office communications will result in the application being held abandoned. Notification of “Change of Address” should be made by separate letter, and a separate notification should be filed for each application.

      Reconsideration

      Upon submission of a reply to an Office action, the application will be reconsidered and further examined in view of applicant's remarks and any amendments included with the reply.

      The examiner will then either withdraw the rejection and allow the application or, if not persuaded by the remarks and/or amendments submitted, repeat the rejection and make it Final. Applicant may file an appeal with the Board of Patent Appeals and Interferences after given a final rejection or after the claim has been rejected twice. Applicant may also file a new application prior to the abandonment of the original application, claiming benefit of the earlier filing date. This will allow continued prosecution of the claim.