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

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."

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Question 3

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 4

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.

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Question 5

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.

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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 (1)

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

MPEP 201 – Types of Applications (1)

What is a Continued Prosecution Application (CPA) for design 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 (2)

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

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

Patent Procedure (2)

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

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