How does the Hague Agreement affect design patent priority claims?
The Hague Agreement Concerning the International Registration of Industrial Designs has expanded the options for claiming priority in design patent applications. According to MPEP 1504.10: “For design applications filed on or after May 13, 2015, a claim for priority may be made pursuant 35 U.S.C. 386(a) to an international design application filed under the Geneva…
Read MoreWhat is the relationship between functionality and ornamentality in design patents?
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…
Read MoreCan functional features be protected by design patents?
While design patents primarily protect ornamental designs, functional features can sometimes be included if they contribute to the overall ornamental appearance. The MPEP 1504.01(c) states: “The design for an article consists of the visual characteristics embodied in or applied to an article. Since a design is manifested in appearance, the subject matter of a design…
Read MoreCan functional features be considered in a design patent anticipation rejection?
Functional features generally cannot be relied upon to support patentability in design patent anticipation rejections. The MPEP states: When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. Additionally,…
Read MoreHow does foreign registration affect design patent anticipation in the US?
Foreign registration can significantly impact design patent anticipation in the US. The MPEP states: Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) – (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. This means that…
Read MoreHow does foreign priority affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications?
Foreign priority can significantly affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications, especially when the conditions of 35 U.S.C. 120 are not met: If the CIP application doesn’t meet the conditions of 35 U.S.C. 120 (e.g., insufficient disclosure), it’s not entitled to the benefit of the parent application’s filing date. In…
Read MoreAre there any exceptions to the public access policy for reissue applications?
While the general policy is to provide public access to reissue applications, there is an exception for certain types of continued prosecution applications (CPAs). According to MPEP 1470: “37 CFR 1.11(b) opens all reissue applications to inspection by the general public.“ However, the MPEP also notes an exception: “The filing of a continued prosecution application…
Read MoreWhat is an Ex parte Quayle action in design patent examination?
An Ex parte Quayle action is a type of Office action issued when the examiner determines that the claim in a design application is patentable, but there are still formal matters that need to be addressed before allowance. The MPEP 1504 states: “When an examiner determines that the claim in a design application is patentable…
Read MoreHow does the USPTO evaluate ornamentality in design patent applications?
The USPTO evaluates ornamentality in design patent applications based on whether the design was created for the purpose of ornamenting and is not purely functional. According to MPEP 1504.01(c): “An ornamental feature or design has been defined as one which was ‘created for the purpose of ornamenting’ and cannot be the result or ‘merely a…
Read MoreHow are differences between the claimed design and prior art evaluated?
When evaluating differences between the claimed design and prior art for nonobviousness, the MPEP emphasizes that it’s the overall appearance that matters: “In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).” The MPEP…
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