Design patent application guide

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, articles of manufacture may possess both functional and ornamental characteristics (MPEP 1502.01).

A claim to a picture, print, impression, etc. per se, that is not applied to or embodied in an article of manufacture is not proper statutory subject matter under 35 U.S.C. 171 (MPEP 1504.01). Also, a design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. Specifically, if the appearance of the design is purely dictated by function (i.e., no alternative designs could have served the same function), then the design lacks ornamentality and is not proper subject matter for a design patent (MPEP 1504.01(c)). In addition, 35 U.S.C. 171 requires that a design to be patentable must be “original.” A design that simulates a well-known or naturally occurring object or person is not original as required by the statute (MPEP 1504.01(d)). Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent application (MPEP 608 and 37 CFR § 1.3).

For design applications, a filing fee, search fee, and examination fee are required. View the current Patent Fee Schedule. If an applicant qualifies as a small entity (37 CFR § 1.27) or a micro entity (37 CFR § 1.29), such as a qualifying independent inventor), these fees are reduced. Small entity status may be established by the submission of a simple written assertion of entitlement to small entity status (MPEP 509.03). A signed “CERTIFICATION OF MICRO ENTITY STATUS” is required before any fee can be paid at the micro entity discount. See USPTO forms PTO/SB/15A and PTO/SB/15B.

The preamble, if included, should state the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article in which the design is embodied. The preamble introduces the application subject matter and is located at the beginning of the specification. Samples are shown below.

The title of the design must identify the article in which the design is embodied by the name generally known and used by the public. Marketing designations are improper as titles and should not be used. A title descriptive of the actual article aids the examiner in developing a complete field of search of the prior art. It further aids in the proper assignment of new applications (to the appropriate class, subclass, and patent examiner), and the proper classification of the patent upon allowance of the application. It also helps the public in understanding the nature and use of the article embodying the design after the patent has been published. Thus, applicants are encouraged to provide a specific and descriptive title. See MPEP 1503.01 for additional guidance regarding titles.

The figure descriptions indicate what each view of the drawings represents, i.e., front elevation, top plan, perspective view, etc.

Any description of the design in the specification, other than the figure descriptions (i.e., description of the figure(s) of the drawing), is generally not necessary since, as a general rule, the drawing is the design's best description. However, a descriptive statement can be included when useful for understanding aspects of the drawing needing explanation.

The following types of descriptive statements are permissible in the specification:

• A description of the appearance of portions of the claimed design which are not illustrated in the drawing disclosure (i.e., “the right side elevational view is a mirror image of the left side”).
• Description indicating that portions of the article that are not shown form no part of the claimed design.
• Statement indicating the purpose of broken lines in the drawing, for example, a statement explaining that environmental structure or boundaries form no part of the design to be patented.
• Description denoting the nature and intended use of the claimed design, if not included in the preamble.

A design patent application may only include a single claim. The claim language identifies the subject of the claim as the "ornamental design." It also indicates the article of manufacture to which the design is applied and incorporates the drawings. The claim must be in formal terms to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” The designation of the article in the claim should be the same as the designation of the article in the title of the invention.

When a descriptive statement is properly included in the specification, the words “and described” should be added to the claim following the term “shown.” The claim should then read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.” See MPEP 1503.01(III) for more information.

The drawing disclosure is the most important element of the application. Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture. The design drawing or photograph must comply with the disclosure requirements of 35 U.S.C. 112, first paragraph. To meet the requirements of 35 U.S.C. 112, the drawings or photographs must include a sufficient number of views to constitute a complete disclosure of the appearance of the design claimed. 

Photographs and ink drawings may be included in the same application; however, photographs and ink drawings must not be used to disclose the same embodiment of the claimed design. The use of both photographs and ink drawings in the same embodiment would result in a high probability of inconsistencies between corresponding elements on the ink drawings as compared with the photographs. Photographs submitted in lieu of ink drawings are limited to showing the article to which the design is applied and must exclude the article’s environment.

An oath or declaration is a formal statement that must be made by the inventor in a non-provisional application, including utility, design, plant and reissue applications. Either form PTO/AIA/01 or PTO/AIA/08 may be used to make the required declaration in a non-provisional application. It is preferred that applicants use form PTO/AIA/01, which must be filed together with an application data sheet (form PTO/AIA/14). Each inventor must sign an oath or declaration that includes certain statements required by law and the USPTO rules, including the statement that he or she believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application, and the statement that the application was made or authorized to be made by him or her. See 35 U.S.C 115 and 37 CFR § 1.63. An oath must be sworn to by the inventor before a notary public. A declaration may be submitted in lieu of an oath. A declaration does not need to be notarized. Oaths or declarations are required for design, plant, utility, and reissue applications. In addition to the required statements, the oath or declaration must set forth the legal name of the inventor and, if not provided in an application data sheet, the inventor's mailing address and residence. In lieu of an oath or declaration, a substitute statement may be signed by the applicant with respect to an inventor who is deceased, legally incapacitated, cannot be found or reached after diligent effort, or has refused to execute the oath or declaration. Joint inventors who are the applicant may sign a substitute statement for an inventor who cannot be found or reached after diligent effort or has refused to execute the oath or declaration. However, joint inventors cannot sign a substitute statement for an inventor who is deceased or legally incapacitated.  A legal representative of the deceased or legally incapacitated inventor or the assignee who is the applicant may sign a substitute statement for a deceased or legally incapacitated inventor. The assignee (or party to whom the inventor is obligated to assign the invention) who is the applicant may sign a substitute statement for an inventor who is deceased, legally incapacitated, cannot be found or reached after diligent effort, or has refused to execute the oath or declaration. Form PTO/AIA/02 is the USPTO's substitute statement form for filing utility applications in these situations. When filing a continuing application, a copy of the oath or declaration filed in the earlier application may be used provided that it complies with the rules in effect for the continuing application (i.e., the rules that apply to applications filed on or after September 16, 2012). The oath or declaration must be personally signed by the inventor, either with a handwritten signature (i.e., pen applied to paper) or an "S-signature" (a typed name or electronic image of a handwritten signature inserted between forward slashes on the signature line). Each inventor's legal name is required.

Any oath or declaration must be in a language the inventor understands. If the oath or declaration used is in a language other than English and is not in a form provided by the USPTO or provided in accordance with Patent Cooperation Treaty (PCT) Rule 4.17(iv), an English translation together with a statement that the translation is accurate is required. The USPTO currently provides translations of forms PTO/AIA/01 and PTO/AIA/02 into 10 languages: Chinese (simplified), Dutch, French, German, Italian, Japanese, Korean, Russian, Swedish, and Spanish. The oath or declaration required of the inventor must comply with the requirements set forth in 37 CFR § 1.63 and 37 CFR § 1.69. 

Disclosure of the entire article

I, John Doe, have invented a new design for a jewelry cabinet, as set forth in the following specification. The claimed jewelry cabinet is used to store jewelry and could sit on a bureau.

Fig. 1 is a front elevational view of a jewelry cabinet showing my new design;

Fig. 2 is a rear elevational view thereof;

Fig. 3 is a left side elevational view thereof;

Fig. 4 is a right side elevational view thereof;

Fig. 5 is a top plan view thereof; and

Fig. 6 is a bottom plan view thereof.

I claim: the ornamental design for a jewelry cabinet as shown.

Disclosure of only the surfaces of an article that are visible during use (no bottom view or description necessary)

I, John Doe, have invented a new design for a jewelry cabinet, as set forth in the following specification. The claimed jewelry cabinet is used for storing jewelry and could sit on a bureau.

Fig. 1 is a front elevational view of a jewelry cabinet showing my new design;

Fig. 2 is a rear elevational view thereof;

Fig. 3 is a left side elevational view thereof;

Fig. 4 is a right side elevational view thereof;

Fig. 5 is a top plan view thereof.

I claim: the ornamental design for a jewelry cabinet as shown.

Disclosure of only the surfaces of an article that are visible during use - The rear view disclosed by description

I, John Doe, have invented a new design for a jewelry cabinet, as set forth in the following specification. The claimed jewelry cabinet is used for storing jewelry and could sit on a bureau.

Fig. 1 is a front elevational view of a jewelry cabinet showing my new design;

Fig. 2 is a left side elevational view thereof;

Fig. 3 is a right side elevational view thereof; and

Fig. 4 is a top plan view thereof.

The rear of the jewelry cabinet is flat and unornamented.

I claim: the ornamental design for a jewelry cabinet as shown and described.

Disclosure of a surface pattern applied to an article

I, John Doe, have invented a new design for a jewelry cabinet with surface pattern applied, as set forth in the following specification.

Fig. 1 is a front elevational view of a jewelry cabinet with surface pattern;

Fig. 2 is a left side elevational view thereof, the right side being a mirror image.

The broken lines showing a jewelry cabinet forms no part of the claimed design.

I claim: the ornamental design for a jewelry cabinet with surface pattern as shown and described.

In addition to the drawing disclosure, certain other information is necessary. While no specific format is required for the application papers, it is strongly suggested that applicant follow the formats presented herein to ensure that the application is complete.

A design patent application can be filed with the USPTO through the USPTO's patent electronic filing system, by mail via the U.S. Postal Service, or by hand delivery to the Office in Alexandria, Virginia. The USPTO patent electronic filing system is a web-based patent application and document submission system with which anyone using a web-enabled computer may file patent applications and documents without downloading special software or changing document preparation tools and processes. Full technical support for the USPTO patent electronic filing system is available through the Patent Electronic Business Center (EBC) at 866-217-9197 from 6 a.m. to midnight ET, Monday through Friday, except Federal holidays. You'll find more information about the USPTO patent electronic filing system, on our Patent Electronic Business Center webpage.

When a design patent application that includes at least a specification, a drawing and a claim is received by the Office, it is assigned an Application Number and a Filing Date. A "Filing Receipt" containing this information is sent to the applicant. Applicant should promptly review the Filing Receipt to ensure that information on the Filing Receipt is accurate, for example, that all inventor names are spelled correctly and any benefit or priority claims have been recognized by the Office. Once the application is in condition for examination, the application is then assigned to an examiner. As a general guideline, applications are examined in order of their filing date. 

The actual “examination” entails, for example, checking the application to ensure that all formal requirements have been met, ensuring the design can be understood from the drawing disclosure, and making a comparison of the claimed subject matter with the “prior art.” “Prior art” consists of issued patents and published materials that are “prior” to the application’s effective filing date. If the claimed subject matter is found to be patentable, the application will be “allowed,” and instructions will be provided to applicant for completing the process to permit issuance as a patent.

The examiner may reject the claim in the application if the disclosure cannot be understood or is incomplete, or if a reference or combination of references found in the prior art, shows the claimed design to be unpatentable.  In addition, the examiner may make an objection as to a matter of form (e.g., an objection to the drawing disclosure). The examiner will then issue an Office action detailing any objections and/or rejections and thereby discuss the substantive matters which affect patentability.

This Office action may also contain suggestions by the examiner for amendments to the application. Applicant should keep this Office action for his or her files, and not send it back to the Office.

If, after receiving an Office action, applicant elects to continue prosecution of the application, a timely reply to the action must be submitted. This reply should include a request for reconsideration or further examination of the claim, along with any amendments desired by the applicant, and must be in writing. The reply must distinctly and specifically point out the supposed errors in the Office action and must address every objection and/or rejection in the action. If the examiner has rejected the claim over prior art, a general statement by the applicant that the claim is patentable, without specifically pointing out how the design is patentable over the prior art, does not comply with the rules.

In all cases where the examiner has said that a reply to a requirement is necessary, or where the examiner has indicated patentable subject matter, the reply must comply with the requirements set forth by the examiner, or specifically argue each requirement as to why compliance should not be required.

In any communication with the Office, applicant should include the following items:

1. Application number (checked for accuracy).
2. Group art unit number (copied from filing receipt or the most recent Office action).
3. Filing date.
4. Name of the examiner who prepared the most recent Office action.
5. Title of invention.

It is applicant's responsibility to make sure that the reply is received by the Office prior to the expiration of the designated time period set for reply. This time period is set to run from the “Date Mailed,” which is indicated on the first page of the Office action. If the reply is not received within the designated time period, the application will be considered abandoned. In the event that applicant is unable to reply within the time period set in the Office action, abandonment may be prevented if a reply is filed within six months from the mail date of the Office action provided a petition for extension of time and the fee set forth in 37 CFR § 1.17(a) are filed. The fee is determined by the amount of time requested, and substantially increases as the length of time increases. An “Extension of Time” does not have to be obtained prior to the submission of a reply to an Office action; it may be mailed along with the reply. For current fees, read through our USPTO fee schedule. Note: an extension of time cannot be obtained when responding to a “Notice of Allowance and Fee(s) Due.” See MPEP 502 for more information on depositing a correspondence.

To ensure that a time period set for reply to an Office action is not missed; a “Certificate of Mailing” should be attached to the reply. This “Certificate” establishes that the reply is being mailed on a given date. It also establishes that the reply is timely, if it was mailed before the period for reply had expired, and if it is mailed with the United States Postal Service. A “Certificate of Mailing” is not the same as “Certified Mail.” See MPEP 512 for more information on Certificate of Mailing.

A suggested format for a Certificate of Mailing is as follows (see also USPTO form PTO/SB/92):

"I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450, on (DATE MAILED)"

(Name - Typed or Printed)  __________________________________

Signature__________________________________

Date______________________________________

If a receipt for any paper filed in the USPTO is desired, applicant should include a stamped, self-addressed postcard, which lists, on the message side, applicant's name and address, the application number, and filing date, the types of papers submitted with the reply (e.g., 1 sheet of drawings, 2 pages of amendments, 1 page of an oath/declaration, etc.). This postcard will be stamped with the date of receipt by the mailroom and returned to applicant. This postcard will be applicant's evidence that the reply was received by the Office on that date.

If applicant changes his or her mailing address after filing an application, the Office must be notified in writing of the new address. Failure to do so will result in future communications being mailed to the old address, and there is no guarantee that these communications will be forwarded to applicant's new address. Applicant's failure to receive, and properly reply to these Office communications will result in the application being held abandoned. Notification of “Change of Address” should be made by separate letter, and a separate notification should be filed for each application, e.g., change of correspondence address form PTO/AIA/122 available our Forms for patent applications webpage.

Upon submission of a reply to an Office action, the application will be reconsidered and further examined in view of applicant's remarks and any amendments included with the reply. The examiner will then either, withdraw the rejection and allow the application or, if not persuaded by the remarks and/or amendments submitted, repeat the rejection and make it final. Applicant may file an appeal with the Patent Trial and Appeal Board after receiving a final rejection or after the claim has been rejected twice. Applicant may also file a new application prior to the abandonment of the original application, claiming benefit of the earlier filing date. This will allow continued prosecution of the claim.

Note that both stippling and straight-line surface shading, while permissible on the same object to show surface contrast, should not be used together on the same surface.

Oblique line shading must be used to show transparent or translucent surfaces (as well as highly polished or reflective surfaces such as a mirror). Note that elements visible behind transparent surfaces should be shown in light, full lines, not broken lines.

Broken lines may be used to show environment and boundaries that form no part of the claimed design.

An exploded view is only supplementary to a fully assembled view. A bracket must be employed to show the association of elements.

•  Conditions for patentability; novelty (35 U.S.C. 102)
• Conditions for patentability; non-obvious subject matter (35 U.S.C. 103)
• Specification (35 U.S.C. 112)
  • Note: paragraphs (c)-(f) do not apply to design patent applications
• Notice of rejection; reexamination (35 U.S.C. 132)
• Patents for designs (35 U.S.C. 171)
• Right of priority (35 U.S.C. 172)
• Term of design patent (35 U.S.C. 173)

• Business to be conducted with decorum and courtesy (37 CFR § 1.3)
• Inventor's oath or declaration (37 CFR § 1.63)
• Foreign language oaths and declarations (37 CFR  § 1.69)
• Application data sheet (37 CFR § 1.76)
• Standards for drawings (37 CFR § 1.84)
• Manner of making amendments in application (37 CFR § 1.121)
• Design drawings (37 CFR § 1.152)
• Title, description and claim, oath or declaration (37 CFR § 1.153)
• Arrangement of application elements in a design application (37 CFR § 1.154)

Questions regarding a design patent application and its forms may be directed to one of the Design Patent Practice Specialists of Technology Center 2900.

Mailing address:

United States Patent and Trademark Office
Commissioner for Patents P.O. Box 1450
Alexandria, VA 22313-1450