How can an applicant overcome a rejection based on lack of ornamentality?
An applicant can overcome a rejection based on lack of ornamentality under 35 U.S.C. 171 by providing evidence that demonstrates the ornamental nature of the design. The MPEP outlines several ways to overcome such a rejection: Submit an affidavit or declaration under 37 CFR 1.132 explaining which features of the claimed design were created to…
Read MoreHow is the ornamentality of a design determined in patent examination?
The ornamentality of a design is determined by viewing the claimed design in its entirety, rather than focusing on individual features. This approach is outlined in the MPEP, which states: “In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not…
Read MoreHow does the “ordinary designer” standard apply to design patent nonobviousness?
How does the “ordinary designer” standard apply to design patent nonobviousness? The “ordinary designer” standard is crucial in determining nonobviousness for design patents. According to MPEP 1504.03, “The proper inquiry for determining obviousness is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.”…
Read MoreWhat is the role of the Office of Patent Application Processing (OPAP) in handling new design and plant patent applications?
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…
Read MoreWhat constitutes offensive subject matter in design patent applications?
Offensive subject matter in design patent applications includes content that could be deemed offensive to any race, religion, sex, ethnic group, or nationality. This typically includes caricatures or depictions that are discriminatory or disrespectful. According to MPEP 1504.01(e): “Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic…
Read MoreHow does the USPTO handle design patent applications with offensive subject matter?
The USPTO rejects design patent applications that disclose offensive subject matter. According to MPEP 1504.01(e): “Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.” Key…
Read MoreHow does an examiner determine novelty and nonobviousness in design patent applications?
An examiner determines novelty and nonobviousness in design patent applications through a comprehensive search process. According to MPEP 1504: “Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is also mandatory that the search be extended to the mechanical classes encompassing inventions of the…
Read MoreWhat are the general guidelines for assigning nonprovisional design and plant applications for examination?
The general guidelines for assigning nonprovisional design and plant applications for examination include: Applications are assigned based on where they would have an original classification if the claims were in a patent. Claims and statement of invention are generally taken as they read, interpreted in light of the disclosure. The most indented subclass in the…
Read MoreHow does the concept of nexus apply to design patents?
The concept of nexus also applies to design patents, similar to utility patents. As stated in the MPEP, ‘[T]he obviousness analysis involves determining whether ‘the claimed invention as a whole would have been obvious[]’ (quoting 35 U.S.C. 103 )[], and yet we still require a link to the claimed invention’s unique characteristics in that context.…
Read MoreWhen can multiple embodiments be included in a single design patent application?
Multiple embodiments can be included in a single design patent application only if they are patentably indistinct. The MPEP states: “More than one embodiment of a design may be protected by a single claim. However, such embodiments may be presented only if they involve a single inventive concept according to the nonstatutory double patenting practice…
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