1500

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# Chapter 1500 Design Patents

1501
Rules Applicable

1502
Definition of a Design

1503
Elements of a Design Application

1503.01 Specification and Claim

1503.02 Drawing

1504
Examination

1505
Allowance and Term of Design Patent

150G
Foreign Filing Dates

The right to a patent for a design stems
from:

35 U.S.C. 171. Patents for designs. Whoever in-
vents any new, original and ornamental design for an
article of manufacture may obtain a patent therefor.
subject to the conditions and requirements of this title.

The provisions of this title relating to patents for
inventions shall apply to patents for designs, except
as otherwise provided.

## 1501 Rules Applicable [R-20]

Rule 151. Rules applicable. The rules relating to
applications for patents for other inventions or dis-
coveries are also applicable to applications for patents
for designs except as otherwise provided.

Rules 152-155, which relate only to design patents.
are reproduced in the sections of this chapter.

## 1502 Definition of a Design

The design of an object consists of the vis-
ual characteristics or aspects displayed by the
object. It is the appearance presented by the
object which creates an impression, through
the eye upon the mind of the observer.

As a design is manifested in appearance the
subject matter of a design application may re-
late to the configuration or shape of an object,
to the surface ornamentation thereof, or both.

A design is inseparable from the object and
cannot exist alone merely as a scheme of sur-
face ornamentation. It must be a definite.
preconceived thing, capable of reproduction
and not merely the chance result of a method.

## 1503 Elements of a Design Applica- tion

A design application has essentially the ele-
ments required of an application for a patent
for a "mechanical" invention or discovery (see
Chapter 600). However, unlike the latter

where a preamble to the specification is no
longer required, a preamble still remains a re-
quirement in a design application (Rule 154).

If the single signature form be used it must
be accompanied by a separate sheet of speci-
fication which includes a preamble.

In design applications the following should
be observed in addition to the instruction set
forth in 605.04 to 605.05 (a) pertaining to sig-
nature and name.

If the name is typewritten without the mid-
dle initial or name, but the signature contains
the middle initial or name, amendment should
be required that the typewritten name con-
form with applicant's signature.

## 1503.01 Specification and Claim [R-20]

Rule 153. Title, description and claim, oath or
declaration. (a) The title of the design must designate
the particular article. No description, other than a refer-
ence to the drawing, is ordinarily required. The claim
shall be in formal terms to the ornamental design for
the article (specifying name) as shown, or as shown
and described. More than one claim is neither required
nor permitted.

(b) The oath or declaration required of the appli-
cant must comply with Rule 65 except that the period
of twelve months specified therein with respect to
foreign applications is six months in the case of
designs.

Rule 154, Arrangement of specification. The follow-
ing order of arrangement should be observed in framing
design specifications :

(a) Preamble, stating name of the applicant and
title of the design.

(b) Description of the figure or figures of the
drawing.

(c) Description, if any.

(d) Claim.

(e) Signature of applicant. (See rule 57.)

If applicant is entitled under 35 U.S.C. 120
to the benefit of an earlier U.S. filing date, the
statement that, "This is a division [continua-
tion, continuation-in-part ] of Design Applica-
tion Serial No.
filed
"
should appear between the description of the
figure and the claim.

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A design application cannot be considered to
be a division of a utility application, and is not
entitled to the filing date thereof, even though
the drawings of the earlier filed utility applica-
tion show the same article as that in the design
application. In re Campbell, 1954 C.D. 191;
101 USPQ 406 : Certiorari denied, 348 U.S. 858.

### TITLE

The title is of great importance in a design
application. It serves to identify the article
in which the design is embodied and which is
shown in the drawing, by the name generally
used by the public. The title should be to a
specific definite article. Thus a stove would be
called a "Stove" and not a "Heating Device."
The same title is used in the petition, in the
preamble to the specification, in the description
of the drawing, and in the claim. The title of
the article being claimed in a design patent
must correspond to the name of the article
shown in solid lines in the drawing.

To allow latitude of construction it is permis-
sible to add to the title "or similar article."
The title in the preamble may be in the
plural -- Design for Chairs or in the singu-
lar-Design for a Chair, but in the claim it
must be in the singular.

The title implies that the type of article
named is old, but that the form shown is new.
The title may particularize the type named by
specifying a use "Bottle for Perfumes" or by
indicating a structural type-"Vacuum Bottle.'

#### DESCRIPTION

Any description of the claimed design in the
specification other than a brief description of
the drawing figures is generally not necessary,
for as a rule the illustration is its own best
description. If there is a special description
it should be of the appearance of the article.
Special descriptions denoting the nature and
environmental use of the claimed design are
permissible where an appropriate title cannot
satisfy this requirement. Special descriptions
describing the construction of the claimed de-
sign are not permitted.

Where there is a particular feature of novelty
in a case, this feature should be described in the
specification by means of a "characteristic"
feature clause, Rule 71 (c).

Statements in the specification which de-
scribe or suggest modifications of the design
shown on the drawing are not permitted. Sim-
ilarly a statement amounting to a disclaimer
is improper and not permitted.

### CLAIM

Only one claim is required or permissible in
a design application and this claim should be

in formal terms to the ornamental design for
the article (specifying name) as shown. (In
re Rubinfield, 1959 C.D. 412; 123 USPQ 210.)

Where there is a special description, the
claim must include the words, "and described"
following "shown."

## 1503.02 Drawing [R-20]

Rule 152. Drawing. The design must be represented
by a drawing made in conformity with the rules laid
down for drawings of mechanical inventions and must
contain a sufficient number of views to constitute a
complete disclosure of the appearance of the article.
Appropriate surface shading must be used to show
the character or contour of the surfaces represented.

The necessity for good drawings in a design
application cannot be overemphasized. As the
drawing constitutes substantially the whole dis-
closure of the design, it is of utmost impor-
tance that it be so well executed both as to
clarity of showing and completeness that noth-
ing regarding the shape, configuration and sur-
face ornamentation of the article sought to be
patented is left to conjecture.

The drawing disclosure should be confined to
the article on which design patent protection is
sought. Drawing disclosure of environmental
structure is permitted only when the nature
and intended use of the claimed design cannot
be adequately explained by the title or by a
statement in the specification as set forth in
section 1503.01. Disclosure of environmental
structure must always be set forth by means of
broken lines.

The ornamental design which is being claimed
must be shown in solid lines in the drawing.
Dotted lines for the purpose of indicating un-
important or immaterial features of the designed
article are not permitted. There are no por-
tions of a claimed design which are immaterial
or unimportant. In re Blum, 852 O.G. 1045;
153 USPQ 177.

With practically all articles, except flat
goods, such as fabrics, at least two views are
necessary, showing the article in three dimen-
sions. Occasionally a good perspective view
alone is sufficient.

The drawing figures should be appropriately
surface shaded to show character or contour of
the surface represented. This is of particular
importance in the showing of three dimen-
sional articles where it is necessary to clearly
delineate plane, concave, convex, raised and de-
pressed surfaces of the article and distinguish
between open and closed areas thereof.

While a sectional view that more clearly
brings out the design is permissible (ex parte
Lohman, 1912 C.D. 336: 184 O.G. 287) those
that are presented for the evident purpose of

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1505

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including purely structural features, or exhib-
iting mechanical functions, are not favored. It
is the article as seen by the observer, and not
internal structure, which should be shown.

In design applications, just as in "mechani-
cal" cases, additional or amended illustration
involving new matter is refused entry. The
practice of including in the application when
filed a photograph or model of the article, or
in the case of a flat article, such as cloth, a
sample showing a complete unit of the design
is permissible and may be followed. An in-
sufficient drawing may be fatal to validity.

## 1504 Examination [R-20]

In design cases as in "mechanical" cases.
novelty and invention are necessary prerequi-
sites to the grant of a patent. In the case of
designs, the inventive novelty resides in the
shape or configuration or ornamentation as
determining the appearance or visual aspect of
the object or article of manufacture in contra-
distinction to the structure of a machine, arti-
cle of manufacture or the constitution of a
composition of matter.

The fact that an object is new and ornamen-
tal is not conclusive of its patentability as a
design, since the ornate effect may be due to
color, workmanship, finish. and the like, fac-
tors of appearance that play no part in deter-
mining the question of patentable design.

Whether or not a design is new and original
must generally be determined by a search in
the class of design patents to which the article
claimed belongs and in analogous classes. If
no satisfactory anticipation be found here, the
search must be extended to the mechanical
Group handling inventions of the same general
type. Catalogs and trade journals are also
consulted. In fact, there are no definite limits
to the field of search.

Inasmuch as a design patent deals with ap-
pearance only, the test to be applied in deter-
mining the question of anticipation is identity
or similarity of appearance. If a reference is
found that is identical in appearance, the ques-
tion of patentability is, of course, definitely
settled in the negative.

However, it more often occurs that the refer-
ence differs in some respects from the design
claimed and the question of invention is thus
presented. Does the difference in configuration
of applicant's design represent invention and
does such difference add to its ornamental
value? Is the difference for structural or
functional reasons, or for the purpose of
ornamentation ? See section 706.

It is permissible, in a proper case, to illustrate
more than one embodiment of a design invention

in a single application. However, such embodi-
ments can be presented only if they involve a
single inventive concept and are not patentably
distinct from each other. An unreasonable
number of embodiments of the same invention
will not be permitted. The disclosure of plural
embodiments does not require or justify more
than a single claim which claim must be in
formal terms to the ornamental design for an
article as shown and described. In re Rubin-
field 1959 C.D. 412; 123 USPQ 210.

If two or more patentably distinct articles
are disclosed and attempted to be claimed in a
single design application, the Examiner may
require that the application be restricted to one
invention. When a requirement for restriction
is made, action on the merits of the claim will
ordinarily be held in abevance.

When an applicant presents a claimed design
in two or more applications which do not, in the
opinion of the Examiner, differ patentably from
one another, the claim in one application is re-
jected on the claim in the other application.
See section 822.01 and Rule 78(b).

As novelty of configuration or surface orna-
mentation is a requisite for design patentabil-
ity, a design which is merely simulative of a
known object is not patentable and this is true
even though it is used for a different purpose
or function.

A utility patent and a design patent may be
based on the same subject matter; however,
there must be a clearly patentable distinction
between them. Where the utility invention as
defined by the claims cannot be made without
infringing the design, double patenting exists
and two patents cannot issue; but no double
patenting is present where a device can be
made in accordance with the claims of the util-
ity patent that has an appearance so different
from the design as not to infringe the same.
(In re Barber, 1936 C.D. 184; 465 O.G. 724.)

## 1505 Allowance and Term of Design Patent [R-20]

35 U.S.C. 173. Term of design patent . Patents for
designs may be granted for the term of three years
and six months, or for seven years, or for fourteen
years, as the applicant, in his application, elects.

Rule 155. Issue and term of design patents. If. on
examination, it shall appear that the applicant is
entitled to a design patent under the law, a notice of
allowance will be sent to him, his attorney or his
agent. calling for the payment of an issue fee in an
appropriate amount dependent on the duration of the
term desired by the applicant. If this lasue fee is not
paid within three months of the date of the notice of
allowance, the application shall be regarded as aban-
doned. If this fee is not timely paid but is submitted.

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with the fee for delayed payment, within three months
of its due date with a verified showing of sufficient
cause for the late payment. it may be accepted by the
Commissioner as though no abandonment had ever
occurred.

35 U.S.C. $1(a). Patent fees. 3. In design cases :
a. On filing each design application, $20. b. On issuing
each design patent : For three years and six months.
$10; for seven years, $20; and for fourteen years, $30.

The filing fee is now the same for all design
applications. There is also an issue fee which
varies according to the term requested. These
changes apply only to design applications filed
on or after October 25, 1965.

The term of a design patent may not be ex-
tended by reissue. Ex parte Lawrence, 1946
C.D. 1: 70 USPQ 326.

1506 Foreign Filing Dates [R-20]

35 U.S.C. 172. Right of priority. The right of prior-
ity provided for by section 119 of this title and the

time specified in section 102(d) shall be six months
in the case of designs.

The provisions of 35 U.S.C. 119 apply also
to design applications. However, in order to
obtain the benefit of an earlier foreign filing
date, the United States application must be filed
within six months of the earliest date on which
any foreign application for the same design was
filed.

Registration of a design abroad is considered
to be equivalent to patenting under 35 U.S.C.
119 and 35 U.S.C. 102(d), whether the foreign
grant is published or not, Ex parte Weiss. 852
O.G. 255: 159 USPQ 122.

The time for filing the papers required by the
statute is specified in the second paragraph of
Rule 55. See 201.14(a). In design applications
filed on or after October 25, 1965, the latest time
at which the papers may be filed is the date for
payment of the issue fee unless earlier required
as specified in Rule 55.

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