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