What are the key differences between nonobviousness for utility patents and design patents?
What are the key differences between nonobviousness for utility patents and design patents?
While the general concept of nonobviousness applies to both utility and design patents, there are important differences in how it’s assessed. According to MPEP 1504.03:
Key differences include:
- Subject matter: Utility patents focus on functional aspects, while design patents concern ornamental appearance.
- Standard of assessment: Utility patents use the “person having ordinary skill in the art” (PHOSITA) standard, while design patents use the “ordinary designer” standard.
- Prior art considerations: For design patents, the focus is on visual characteristics and overall appearance, rather than functional elements.
- Motivation to combine: In design patents, there must be a suggestion in the prior art to modify the basic design with features from secondary references.
- Analogous art: The scope of analogous art for design patents may be broader, including designs from various fields that have similar visual characteristics.
The MPEP states: “In design patent applications, the factual inquiry in determining obviousness over a combination of references is the same as in utility patent applications. However, the emphasis on visual characteristics and the effect of the design as a whole is greater than in utility patent applications.”
Understanding these differences is crucial for properly assessing nonobviousness in design patent applications and avoiding improper rejections based on utility patent standards.
To learn more: