Question 1

What is a Continued Prosecution Application (CPA) for design patents?

Accepted Answer

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

Question 2

What are the series codes for different types of patent applications?

Accepted Answer

The USPTO assigns different series codes to various types of patent applications:

01/ - 16/: Nonprovisional applications (utility, plant, and reissue)
29/: Design applications
35/: International design applications
60/, 61/, and 62/: Provisional applications
90/: Ex parte reexamination proceedings
95/: Inter partes reexamination proceedings
96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, 'Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.' (MPEP 503)

Question 3

How can I delete a named inventor when filing a CPA for a design patent?

Accepted Answer

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on inventorship, visit: inventorship.

For more information on patent procedure, visit: patent procedure.

Question 4

Are design patents included in the Patent Cooperation Treaty (PCT)?

Accepted Answer

No, design patents are not included in the Patent Cooperation Treaty (PCT). This is explicitly stated in the Manual of Patent Examining Procedure (MPEP):

"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."

This means that the international filing procedures available for utility patents through the PCT system are not applicable to design patents. Instead, for international protection of designs, applicants can use the Hague Agreement Concerning the International Registration of Industrial Designs, which provides a mechanism for obtaining design protection in multiple countries through a single international application.

It's important for inventors and patent practitioners to be aware of this distinction when considering international protection for their designs.

To learn more:

Question 5

Are maintenance fees required for all types of patents?

Accepted Answer

Are maintenance fees required for all types of patents?

No, maintenance fees are not required for all types of patents. The MPEP 2504 provides clear guidance on which patents are subject to maintenance fees:

"Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents based on applications filed before June 8, 1995. This includes reissue patents as well as original patents."

Here's a breakdown of maintenance fee requirements by patent type:

Utility patents: Subject to maintenance fees
Design patents: Not subject to maintenance fees
Plant patents (filed before June 8, 1995): Not subject to maintenance fees
Plant patents (filed on or after June 8, 1995): Subject to maintenance fees
Reissue patents: Subject to maintenance fees if the original patent was subject to them

It's crucial for patent holders to understand these distinctions to properly maintain their patent rights and avoid unintentional expiration due to non-payment of required fees.

To learn more:

Question 6

How does a CPA (Continued Prosecution Application) differ from other continuing applications?

Accepted Answer

A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:

A 'continued prosecution application' (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.

Key differences of CPAs compared to other continuing applications:

Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
Automatic abandonment: Filing a CPA automatically abandons the prior application.
Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
Examination continuation: The examination process continues from where it left off in the parent application.

It's important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).

For more information on continued prosecution application, visit: continued prosecution application.

For more information on continuing applications, visit: continuing applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

Question 7

Can a design patent application claim benefit from a PCT application under 35 U.S.C. 120?

Accepted Answer

Yes, a design patent application can claim benefit from a PCT application under 35 U.S.C. 120, provided certain conditions are met:

The PCT application must have designated the United States.
The design must be fully disclosed in the PCT application in compliance with 35 U.S.C. 112(a).
All other requirements for a proper benefit claim under 35 U.S.C. 120 must be satisfied.

The MPEP explicitly states: "In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application."

It's important to note that while a design application can claim benefit from a PCT application, it cannot claim benefit from a provisional application. The MPEP clarifies: "It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design patent application cannot claim the benefit of the filing date of the provisional application. This is because a design application may not claim the benefit of a provisional application. See 35 U.S.C. 172."

To learn more:

Question 8

What is the role of the Office of Patent Application Processing (OPAP) in handling new design and plant patent applications?

Accepted Answer

The Office of Patent Application Processing (OPAP) plays a crucial initial role in handling new design and plant patent applications at the USPTO. As detailed in MPEP 909.02(a):

"New nonprovisional design and plant applications are assigned to Technology Centers (TCs) 2900 and 1600, respectively, in the first instance by the Office of Patent Application Processing (OPAP)."

OPAP is responsible for the initial processing of these applications, which includes reviewing them for completeness, assigning application numbers, and directing them to the appropriate Technology Centers for examination. This ensures that applications are routed efficiently to the correct specialized examiners.

To learn more:

Question 9

What is the relationship between functionality and ornamentality in design patents?

Accepted Answer

The relationship between functionality and ornamentality in design patents is complex, as a design must be primarily ornamental to be patentable. However, the presence of functional elements does not automatically disqualify a design from patent protection. The MPEP clarifies this relationship:

"However, a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function."

This means that while an article itself may be functional, its specific design can still be ornamental. The key is to determine whether the overall appearance of the design is primarily dictated by its function or if it incorporates ornamental considerations.

To be patentable, a design must be "primarily ornamental." This is assessed by viewing the claimed design in its entirety, considering the overall appearance rather than the functional or decorative aspect of each separate feature.

To learn more:

Question 10

How do INID Codes differ for industrial designs compared to patents?

Accepted Answer

While INID Codes for industrial designs are similar to those used for patents, there are some key differences:

Industrial design INID Codes are based on WIPO Standard ST.80, while patent INID Codes follow WIPO Standard ST.9.
Some codes are specific to industrial designs, such as those related to exhibition priority (code 23) and multiple designs in a single application (code 28).
The meaning of certain codes may differ slightly between patents and industrial designs.

The MPEP notes: INID codes for industrial designs are similar to, but not identical to, those used for patents and like documents. INID codes for industrial designs may be of most interest to design patent examiners.

To learn more:

Question 11

Can a picture or abstract design alone be patented as a design patent?

Accepted Answer

No, a picture or abstract design alone cannot be patented as a design patent. According to MPEP 1504.01:

"A picture standing alone is not patentable under 35 U.S.C. 171. The factor which distinguishes statutory design subject matter from mere picture or ornamentation, per se (i.e., abstract design), is the embodiment of the design in an article of manufacture."

The design must be applied to or embodied in an article of manufacture to be eligible for design patent protection. A claim to a picture, print, or impression that is not applied to or embodied in an article of manufacture should be rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter.

To learn more:

Question 12

What is a prima facie case for lack of ornamentality in a design patent?

Accepted Answer

A prima facie case for lack of ornamentality in a design patent is established when an examiner provides sufficient evidence to show that the claimed design lacks ornamental characteristics. The MPEP states:

"To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing."

The evidentiary basis can include:

The examiner's knowledge of the art
A reply to a letter of inquiry
A brochure emphasizing functional/mechanical features
The specification of an analogous utility patent
Information provided in the design patent application's specification

It's important to note that the mere fact that an article would be hidden during its ultimate end use is not sufficient basis for a rejection, but can provide additional evidence to support a lack of ornamentality.

To learn more:

Question 13

How are secondary considerations applied in design patent nonobviousness analysis?

Accepted Answer

How are secondary considerations applied in design patent nonobviousness analysis?

Secondary considerations, also known as objective indicia of nonobviousness, play an important role in the analysis of design patent nonobviousness. According to MPEP 1504.03:

"Secondary considerations, such as commercial success, long-felt but unsolved needs, failure of others, and unexpected results, may be utilized to rebut a prima facie case of obviousness."

Key aspects of secondary considerations in design patent cases include:

Commercial success: Evidence that the design has achieved significant market success can indicate nonobviousness.
Long-felt need: If the design solves a problem that others have long tried to solve, it may be nonobvious.
Copying by others: Widespread copying of the design by competitors can suggest nonobviousness.
Professional recognition: Awards or praise from industry experts can support nonobviousness.
Unexpected results: If the design produces unexpected aesthetic effects, it may be considered nonobvious.

The MPEP emphasizes: "Evidence of secondary considerations must be evaluated, along with the primary Graham factors, before a conclusion on obviousness is reached."

When presenting secondary considerations, applicants should establish a nexus between the evidence and the claimed design. Examiners must consider all properly presented secondary considerations in their nonobviousness analysis, even if they have already made a prima facie case of obviousness based on prior art.

To learn more:

Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 200 – Types and Status of Application; Benefit and Priority (3)

What is a Continued Prosecution Application (CPA) for design patents?

How can I delete a named inventor when filing a CPA for a design patent?

How does a CPA (Continued Prosecution Application) differ from other continuing applications?

MPEP 201 – Types of Applications (3)

What is a Continued Prosecution Application (CPA) for design patents?

How can I delete a named inventor when filing a CPA for a design patent?

How does a CPA (Continued Prosecution Application) differ from other continuing applications?

MPEP 2500 – Maintenance Fees (1)

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?

MPEP 2504 – Patents Subject To Maintenance Fees (1)

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?

MPEP 500 – Receipt and Handling of Mail and Papers (1)

What are the series codes for different types of patent applications?

MPEP 503 – Application Number and Filing Receipt (1)

What are the series codes for different types of patent applications?

Patent Law (5)

What is a Continued Prosecution Application (CPA) for design patents?

What are the series codes for different types of patent applications?

How can I delete a named inventor when filing a CPA for a design patent?

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?

How does a CPA (Continued Prosecution Application) differ from other continuing applications?

Patent Procedure (5)

What is a Continued Prosecution Application (CPA) for design patents?

What are the series codes for different types of patent applications?

How can I delete a named inventor when filing a CPA for a design patent?

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?

How does a CPA (Continued Prosecution Application) differ from other continuing applications?