PRIMARY U.S. PATENT DESIGN STATUTES AND COMMENTARY
AS OF MAY 25, 1998
STATUTES: 35 U.S.C. §§ 171-173
1. As stated in § 171, paragraph 2, the general patent statute, §§ 1-376, applies to design patents, except where the patent statute states otherwise. This fact requires that case law developments and statutory interpretation concerning utility patents, for example, must be consulted on many legal issues which apply to design patents.
2. The novelty standards in § 171, paragraph 1, are the requirements of §§ 102 and 103.
3. The key requirement of ornamental, in § 171, is for the purpose of emphasizing that design patents protect product appearance primarily.
4. A critical point that may not be well known to most patent attorneys that usually work on utility patent applications, is that the Convention period for filing a design application and receiving the Convention filing date is six months. § 172 states this fact, established under the Paris Convention for the Protection of Industrial Property.
5. The reference in § 172 to § 119(e) makes it clear that the recently enacted provisional application procedures do not apply to design patents. There is no priority date available from a provisional application for a design application, even though the law gives priority for a product design appearance in a regular utility patent application in continuation application, under proper circumstances, and vice versa. This limitation on the benefits from a provisional application, among other related aspects, need to be reviewed.
§ 171. PATENTS FOR DESIGNS
Whoever invents 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.
§ 172. RIGHT OF PRIORITY
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.
§ 173 TERM OF DESIGN PATENT
Patents for designs shall be granted for the term of fourteen years from the date of grant.
RULES: See the web site page on the recently adopted rules concerning design patents. The rules have the same effect as a statute, but they cannot be in conflict with existing statutory law, or the Constitution.
The Patent and Trademark Office (PTO) has guidelines that should be followed during patent application examination. These helpful guidelines are found in the Manual for Patent Examining Procedure (MPEP). Chapter 1500 of the current 6th Edition, Revision 2, is on Design patents, but other chapters apply generally to design patents on many common topics. The MPEP states the PTO interpretation of existing law and procedure. A court may find a guideline inconsistent with an existing statute or case authority.
A separate page on this web site contains the MPEP Design Patent Chapter 1500, 6th Edition, Revision 2 . Many of the rules specifically addressing design patents are quoted in this document. There are very helpful examples given in this chapter.
Due to the normal delay in updating the MPEP, the 6th edition, Revision 2, does not contain the recently approved PTO rules, discussed in the separate web site page on the rules changes [link to that page]. A careful review of the new rules is necessary on several procedural topics.
This page was last updated on May 31, 1998.