Design Patent Applications - Amazon S3 · design patent, the design claimed can encompass: (1) the...

© Practising Law Institute

Chapter 11

Design Patent Applications*

§ 11:1 Patentable Subject Matter§ 11:1.1 Patentable Designs§ 11:1.2 The Ornamentality Requirement§ 11:1.3 “Concealed During Normal Use” Limitation§ 11:1.4 Anticipation Test for Design Patents§ 11:1.5 Obviousness Test for Design Patents§ 11:1.6 Infringement Test for Design Patents§ 11:1.7 Relationship Between Design Patents, Copyright, and

Trademark[A] Overlap of Design Patent and Copyright[B] Overlap of Design Patent and Trademark

§ 11:2 Parts of the Application§ 11:2.1 Specification

[A] Preamble and Title[B] Description[C] Claim

§ 11:3 Drawings§ 11:3.1 Unitary Design Concept§ 11:3.2 Requirements for Adequate Drawings§ 11:3.3 Drawing the Invention§ 11:3.4 Formal Requirements§ 11:3.5 Illustrative Styles and Symbols

§ 11:4 Information Disclosure Statement§ 11:4.1 Novelty§ 11:4.2 Nonobviousness§ 11:4.3 Scope of Prior Art

§ 11:5 Expedited ExaminationExhibit 11-1 Design Patent Application TransmittalExhibit 11-2 Assignment for Design PatentExhibit 11-3 Photograph Display Design Patent

* The author acknowledges the assistance of Ashok Janah.

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Exhibit 11-4 Decorative Glass Panel Design PatentExhibit 11-5 Dial Top-Housing for Telephone Handset or Similar Article

Design PatentExhibit 11-6 Handle for an Article of Flatware Design PatentExhibit 11-7 Font of Type Design PatentExhibit 11-8 Automobile Design PatentExhibit 11-9 Scarf Design PatentExhibit 11-10 Request for Expedited Examination of a Design Application

(37 C.F.R. § 1.155)

§ 11:1 Patentable Subject Matter

§ 11:1.1 Patentable Designs

The right to patent a design arises from 35 U.S.C. § 171. Under thisstatute, any person who invents any new, original, and ornamentaldesign for an article of manufacture may obtain a design patent.1

Design patents are made available to encourage the ornamental anddecorative arts. In general, design patents are governed by the samerules as utility patents. However, they are much simpler and easier todraft, being subject to fewer written requirements.

The design of an object of “manufacture” can be defined as thevisually perceptible characteristics or features of the object.2 It is thevisual impact created by the appearance of an object upon the mind ofthe observer.3 Since the appearance of the object is the basis of thedesign patent, the design claimed can encompass: (1) the externalshape of an object, such as the shape of the photograph display shownin Exhibit 11-3;4 (2) aspects of an object’s surface ornamentation, suchas a painting on a vase5 or the ornamental design of the glass panelshown in Exhibit 11-4; or (3) some combination of the two. Patentabledesigns include the designs of television sets and radio cabinets,patterns on fabric and clothing, toys and games, jewelry designs, anda myriad of other useful articles.

However, a design patent cannot claim a scheme of decoration orornamentation that exists independently of any article.6 The design isinseparable from the object to which it is applied and cannot existmerely as a scheme of surface ornamentation.7 For example, a line

1. 35 U.S.C. § 171.2. M.P.E.P. § 1502.3. Id.4. Exhibit 11-2, discussed in section 11:2 below, is an assignment for a design

patent.5. M.P.E.P. § 1502.6. Id.7. Id.

§ 11:1 HOW TO WRITE A PATENT APPLICATION

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drawing by itself cannot be patented because it is not a design for anarticle or object. That is why a design for a decorative glass panel andnot the detached design by itself is claimed in Exhibit 11-4. Applyingthis standard, the Patent Office has rejected applications seekingdesign patents for computer software-related icons on the basis that“a picture standing alone is not protectible by a design patent.”8

However, in dicta, the Patent Office has suggested that a design thatis described as an “information icon for display screen of a pro-grammed computer or the like” would be statutory subject matterfor design patents on the basis that an icon “is an integral part of theoperation of a programmed computer,” which is an article of manu-facture.9 The Patent Office has followed up the dicta with guidelinesthat allow patenting computer-generated icons and type fonts, if theyare embodied in an article of manufacture such as a computer screen,monitor, other display panel, or portion thereof.10

On the other hand, the mere dependence of the design on some-thing outside the article of manufacture itself does not precludepatentability. In an unusual case, the C.C.P.A. held that the designformed by a stream of water flowing through a novel water fountainsystem was patentable even though maintenance of the design wasdependent on the flow of water through the fountain.11 The courtreasoned that many articles, such as inflatable objects, stockings, andwallpaper, were dependent on something outside of the article itself,namely air, legs, and a wall, respectively, for the design to be visible.

While design patents have less scope of coverage than utilitypatents, they have the following advantages compared to utilitypatents:

1. Less expensive;

2. Higher allowance rate;

8. Ex parte Tayama, 24 U.S.P.Q.2d 1614 (Bd. Pat. App. & Interf. 1992); Exparte Donaldson, PTO Appeal No. 92-0546 (Bd. Pat. App. & Interf. Apr. 2,1992); Ex parte Donoghue, PTO Appeal No. 92-0539 (Bd. Pat. App. &Interf. Apr. 2, 1992); Ex parte Strijland, PTO Appeal No. 92-0623 (Bd. Pat.App. & Interf. Apr. 2, 1992); Ex parte Donoghue, PTO Appeal No. 92-0543(Bd. Pat. App. & Interf. Apr. 2, 1992).

9. Ex parte Strijland, PTO Appeal No. 92-0623 (Bd. Pat. App. & Interf. Apr. 2,1992).

10. Guidelines for Examination of Design Patent Applications for Computer-Generated Icons, 61 Fed. Reg. 11,380 (Mar. 20, 1996); PTO Notice onDesign Patent Applications for Computer-Generated Icons, Pat. Trademark& Copyright J. (BNA) (Mar. 21, 1996); A. Hugo Word, The New Guide-lines on Protection of Computer-Generated Icons and Typeface, 24 AIPLAQ.J., 2, 3, 4, 415–25 (1996). See Jason J. Du Mont & Mark D. Janis, VirtualDesigns, 17 STAN. TECH. L. REV. 107 (2014).

11. In re Hruby, 373 F.2d 997, 153 U.S.P.Q. 61 (C.C.P.A. 1967).

§ 11:1.1Design Patent Applications

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3. Useful for where appearance of product drives commercialsuccess;

4. Speedy protection is available (see section 11:5);

5. Deters literal knockoffs;

6. Relatively inexpensive foreign patent protection (see section18:4);

7. Usually better damages—infringer ’s gross profits.11.1

§ 11:1.2 The Ornamentality Requirement

Design patents replace the “usefulness” requirement of utility patentswith an ornamentality requirement.12 To be ornamental, the designmust include some primarily nonfunctional feature or characteristic.13

The design cannot be dictated solely by mechanical or functionalconsiderations. A design is purely functional when “every part orsubstantially every part of the shape is dictated by the utility tobe performed.”14 Designs that do not disclose any surface ornamenta-tion or configuration that can be attributed to ornamental or decorativeconsiderations will be rejected by the examiner.15 For example, asoap dish whose only nonfunctional design feature comprised a fewhorizontal lines was not patentable, since the design was primarilyfunctional.16

Although a purely functional design is not patentable, a design thatincorporates functional features can still be patentable if it has orna-mental features that can exist independently of its functional fea-tures.17 Functional and utilitarian aspects of a design do not make thedesign unpatentable per se.18 The functional aspects are not consid-ered for purposes of infringement.19

The Federal Circuit, in holding that the district court did notcommit clear error in finding that an ornamental athletic shoe design“was primarily ornamental,” provided the following guidelines as tothe distinction between ornamentality and functionality:

11.1. 35 U.S.C. § 284; Nordock, Inc. v. Sys. Inc., 803 F.3d 1344 (Fed. Cir. 2015).12. 35 U.S.C. § 171.13. M.P.E.P. § 1504.14. Ex parte Levinn, 136 U.S.P.Q. 606, 607 (Pat. Off. Bd. App. 1962).15. In re Carletti, 328 F.2d 1020, 140 U.S.P.Q. 653 (C.C.P.A. 1964).16. Hygienic Specialties Co. v. H.G. Salzmann, Inc., 302 F.2d 614, 133 U.S.P.Q.

36 (2d Cir. 1962).17. In re Schilling, 421 F.2d 747, 164 U.S.P.Q. 576 (C.C.P.A. 1970); Read

Corp. v. Portec, Inc., 970 F.2d 816, 23 U.S.P.Q.2d 1426 (Fed. Cir. 1992).18. Landes Mfg. Co. v. Chromodern Chair Co., 203 U.S.P.Q. 337 (C.D. Cal.

1978).19. Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010).

§ 11:1.2 HOW TO WRITE A PATENT APPLICATION

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1. If a particular design is essential to the use of the article, itcannot be the subject of a design patent;

2. The utility of each of the various elements that comprise thedesign is not the relevant inquiry with respect to a designpatent;

3. When there are several ways to achieve the function of anarticle’s manufacture, the design of the article is more likely toserve a primarily ornamental purpose; and

4. In today’s marketplace, the primacy of appearance in the designof shoes cannot be ignored when analyzing functionality.20

In another decision, the Federal Circuit identified other factors thathelp determine whether a claimed design is dictated by functionalconsiderations:

1. Whether the protected design represents the best design;

2. Whether alternative designs should adversely affect the utilityof the specific article;

3. Whether there are any concomitant utility patents;

4. Whether advertising touts particular features of the design ashaving specific utility; and

5. Whether there are any elements in the design or in its overallappearance clearly not dictated by function.21

Another example of a product with functional features that quali-fied for design patent protection was an automobile license plateholder with decorative features, even though the holder was designedprimarily to provide advertising space and to hold a license plate.22

Similarly, the functional aspects of a wooden whistle, such as itslength and the position of holes, do not make it unpatentable, whenalternative designs would be functionally equivalent.23

A design can also be rejected on grounds that it discloses subjectmatter that could be offensive to any race, religion, sex, ethnic group,or nationality.24 Offensive caricatures and depictions are rejected as

20. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 U.S.P.Q.2d1913 (Fed. Cir. 1993).

21. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013).22. Robert W. Brown & Co. v. De Bell, 243 F.2d 200, 113 U.S.P.Q. 172 (9th Cir.

1957).23. Moore v. Stewart, 600 F. Supp. 655, 225 U.S.P.Q. 313 (W.D. Ark. 1985).24. M.P.E.P. § 1504.01(d).


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not meeting the ornamental requirements. Such designs are consid-ered frivolous and against public policy and, therefore, impropersubject matter for design patent protection.25

§ 11:1.3 “Concealed During Normal Use” Limitation

If the design of an article is concealed during its normal andintended use, the design cannot be patented, under the rationalethat a concealed design is presumed to lack ornamentality.26 However,the definition of what constitutes “normal and intended use” hasbeen broadly construed. A 1990 Federal Circuit decision held thatnormal use includes the period beginning immediately after completeassembly of the article and ending with the article’s ultimate destruc-tion or disappearance.27 It includes those incidents in the life of thearticle that are not integral to its function or purpose.28 As long as(1) the article is visible at some point during its life, such as inadvertisements or displays, and (2) the appearance of the articleaffected its design, it is patentable even if the article is concealedduring its final use. This test is decided on a case-by-case basis.

Thus, the design of a hip prosthesis device was held to be patentablesubject matter because the device was displayed in advertisements andtrade shows.29 Although the device was concealed during its final use,the likelihood that the shape of the device would be observed during itscommercial life substantially influenced its design and ornamentality.30

Similarly, the design of shotgun shell cartridges that were sold inclear plastic bags with their visual configuration clearly visible to thebuyer was held patentable subject matter because the aesthetic appear-ance of the shells was an important influence on the sale.31 Anotherdecision held that the design of the bead of an automobile tire (that ishidden from view when the tire is mounted) is patentable subjectmatter because the design was visible when the tire was purchased andthe aesthetic appearance of the design may have influenced sales of thetire.32

25. Id.26. Elec. Molding Corp. v. Mupac Corp., 529 F. Supp. 300, 217 U.S.P.Q. 288

(D. Mass. 1981).27. In re Webb, 16 U.S.P.Q.2d 1433 (Fed. Cir. 1990).28. Id.29. Id.30. Id.31. Ex parte Cole, 18 U.S.P.Q.2d 1175 (Pat. Off. Bd. App. 1990).32. Ex parte Wolfer, 121 U.S.P.Q. 319 (Pat. Off. Bd. App. 1958).


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§ 11:1.4 Anticipation Test for Design Patents

To find anticipation of a design patent, the same design must befound in a single piece of prior art, from the viewpoint of the ordinaryobserver. This is the same test, discussed in section 11:1.6, that isapplied for infringement of design patents.33

§ 11:1.5 Obviousness Test for Design Patents

In a design patent obviousness analysis, the starting point is aprimary reference where design characteristics are basically the sameas the claimed design. Other prior art can be combined with the primaryreference only if the designs are so related that the appearance ofcertain ornamental features in one design suggests the applicationof those features to the other.34 The other prior art is considered inorder to create a design that has the same overall visual appearance asa claimed design.

In selecting the primary reference, a court has to discern the correctvisual impression created by the patented design as a whole, and thendetermine whether there is a single reference that creates basicallythe same visual impression.35 As part of the first step in discerning thecorrect visual impression created by the patented design as a whole, acourt needs to translate the design into a verbal description.

In determining whether other prior art can be combined, such acombination can occur only when the designs are so related thatthe appearance of certain ornamental features in one would suggestthe application of those features to the other. A mere similarity inappearance itself can provide a suggestion that one should applycertain features to another design.36

The ultimate inquiry is whether the claimed design would havebeen obvious to a designer of ordinary skill who designs articles ofthe type involved.37

§ 11:1.6 Infringement Test for Design Patents

To find infringement of a design patent, the court must apply the“ordinary observer” test, which requires comparison of two designsfrom the viewpoint of the ordinary observer to determine whether apatented design as a whole is substantially the same as the accused

33. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1223, 93 U.S.P.Q.2d1001 (Fed. Cir. 2009).

34. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012).35. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013).36. MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014).37. High Point Design LLC, 730 F.3d 1301.


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design. The test requires that the perspective of the ordinary observerbe one where the observer is familiar with the prior art.38

When applying the ordinary observer test, similarities in functionalaspects are not to be considered for infringement. When the designcontains both ornamental and functional aspects, the design patentscope is limited to the ornamental aspects alone and does not extendto any functional elements of the claimed article.39

§ 11:1.7 Relationship Between Design Patents,Copyright, and Trademark

[A] Overlap of Design Patent and CopyrightIt is possible to secure both a copyright and a design patent in the

same design. A copyright notice can be included in a design patent if(1) the notice is placed adjacent to the copyrighted material and, if onthe drawing, the notice is limited in size to between 1/8 and 1/4 inch,and (2) the following waiver is included in the specification:

A portion of the disclosure of this patent document containsmaterial to which a claim for copyright is made. The copyrightowner has no objection to the facsimile reproduction by anyone ofthe patent document or the patent disclosure, as it appears in thePatent and Trademark Office patent file or records, but reserves allother copyright rights whatsoever.40

[B] Overlap of Design Patent and TrademarkIt is possible to secure both a copyright and a trademark in the same

design. Registered trademarks can be used in the drawing disclosure.41

§ 11:2 Parts of the Application

Design patent applications are generally governed by the same rulesas those for utility patents.42 Consequently, design patent applicationscontain the same components as their utility counterparts.

A design patent application includes all of the parts of a utilitypatent application as discussed in chapter 2. The same oathor declaration can be used for both utility and design patents.43

However,

38. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 666 (Fed. Cir. 2008).39. Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010).40. M.P.E.P. § 1512.41. Id.42. 37 C.F.R. § 1.151.43. See 37 C.F.R. § 1.153(b).


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• a different transmittal form is used (see Exhibit 11-1),

• a different assignment can be used (see Exhibit 11-2),

• the specification and claims are much simpler, and

• the drawings are much more important and more extensive incontent.

The design patent has special rules that govern the form andsubstantive content of its drawings, specifications, and claims.44 Theessential requirements of those rules are discussed below. Exhibit 11-3is used to illustrate some of the rules. It shows a design patent for amagnetically supported display unit.

§ 11:2.1 Specification

Under 37 C.F.R. § 1.154, the following arrangement should be usedin drafting the specification of a design patent:

a. preamble, stating the title of the design and the name of theapplicant;

b. description of the figure or figures of the drawing;

c. description of the design (optional);

d. claim; and

e. signed oath or declaration.

[A] Preamble and TitleThe preamble should give the name of the applicant, the title of the

design, and optionally a brief description of the nature and intendeduse of the article in which the design is embodied.

The title of a design patent is important because it often serves asthe only form of written description for the claimed design. The titlemust be based on the name generally used by the public to describe orrefer to the article, because it is the primary means by which the publiccan locate prior art designs.45

The title identifies the subject of the patent by specifying either theuse of the article or the structural type of the article.46 For example, atitle specifying the use for a bottle would read “bottle for perfume”; atitle specifying the structural type of the article would read “vacuumbottle.” However, if the category of use or structural type is overly

44. 37 C.F.R. §§ 1.152–1.155.45. M.P.E.P. § 1503.01.46. Id.; see also 37 C.F.R. § 1.153(a) (“the title of the design must designate the

particular article”).


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broad, it results in an indefinite categorization of the object. Forexample, a title that reads “an article of manufacture” is too broad.47

Similarly, a stove should be called a “stove” and not a “heating device.”Likewise, “vacuum bottle” is preferable to “bottle”; “microwave oven”is preferable to “cooking appliance”; and “alarm for an automobile” ispreferable to “electronic device.”48

The title identifies the article in which the design is embodied bythe name generally known and used by the public, but it does notdefine the scope of the claim. For example, the title may be directedto the entire article embodying the design, while the claimed designas shown in full lines in the drawings may be directed to only aportion of the article, in that a portion of the article is shown inbroken lines.

When the design is embodied in an article having multiple func-tions or comprises multiple independent parts or articles that interactwith each other, the title must define them as a single entity, forexample, combined or combination, set, pair, unit assembly, etc.49

Generally, the title is stated in singular form. Sometimes, it isdesirable to claim a design that can be used for more than one article ofmanufacture. To achieve such a latitude of construction, practition-ers sometimes add to the title a phrase such as “or similar article.”For example, the title of Exhibit 11-5 reads “Dial Top-Housing forTelephone Handset or Similar Article.” The Patent Office allows useof language such as “or the like” or “or similar article” for the envi-ronment of the article, but not the article per se. Thus, an acceptabletitle is “Door For Cabinets, Houses, or the Like,” while the title “Dooror the Like” is unacceptable and the claim would be rejected under35 U.S.C. § 112, second paragraph.50

The language of the title and the claim must correspond.51

In the illustrative example of Exhibit 11-3, the title describesthe use of the article as a “Photograph Display.” While the title ofthe corresponding utility patent describes the structure of the samearticle as a “Magnetically Supported Display,” the former title of“Photograph Display” is more appropriate for the design patent,because it is the name by which the article would be generally knownand used by the public, thereby allowing the public to identify thesubject of the design patent more easily.

For computer-generated icons, a title like “computer icon” or “icon”is unacceptable. On the other hand, the following titles are acceptable:

47. Ex parte Root, 7 U.S.P.Q. 311 (Comm’r Pat. 1930).48. M.P.E.P. § 1503.01.49. M.P.E.P. §§ 1503.01 and 1504.01(b).50. M.P.E.P. § 1503.01.51. Id.


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“computer screen with an icon”; “display panel with a computer icon”;“portion of a computer screen with an icon image”; and “portion of amonitor displayed with a computer icon image.”52

[B] DescriptionA brief description of each figure is required for design patents. The

description should describe the type of views shown in the drawings,as previously discussed in chapter 6. The type of view, for example,perspective, top plan, and side elevation, must be specified for eachdrawing.

No written description, other than the description of the drawings,is ordinarily required in a design patent.53 It is not necessary todescribe by words the appearance of an object that is perceivedimmediately from its drawing. Consequently, the use of descriptivewords in a design patent would serve to confuse rather than enlightenthe public. Any verbal description should be kept to a minimum oreliminated entirely from the specification.

However, in certain situations, statements are permissible in thewritten description when necessary to clarify the subject of thedrawings. The following types of statements are permissible:54

• A description of the appearance of any portion of the claimeddesign that is not illustrated in the drawings. This includeslanguage that disclaims portions of the article not shown in thedrawing as forming no part of the claimed design.

• A statement that indicates that any broken-line illustration inthe drawing disclosure is not a part of the design sought to bepatented.

• A description denoting the nature and environmental use of theclaimed design in situations where an appropriate title cannotsatisfy this requirement.

• A “characteristic” feature statement describing a particularnovel or nonobvious feature of the claimed design.

The characteristic feature statement can be used to limit the scopeof the claim to specific aspects of the design and not the design as awhole.55 Consequently, it should be used only when the examiner will

52. Guidelines for Examination of Design Patent Applications for Computer-Generated Icons, 61 Fed. Reg. 11,380 (Mar. 20, 1996); PTO Notice onDesign Patent Applications for Computer-Generated Icons, Pat. Trademark& Copyright J. (BNA) (Mar. 21, 1996).

53. 37 C.F.R. § 1.153(a).54. M.P.E.P. § 1503.01.55. McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 U.S.P.Q. 242 (S.D.N.Y.

1980).


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not permit a claim on the whole design. The following languageshould be used: “The characteristic feature of the design resides in[brief but accurate description].”56 For an application directed to acomputer-generated icon, it is recommended that there be included acharacteristic statement that describes the claimed subject matter asa computer-generated icon embodied in a computer screen, monitor,other display panel, or portion thereof. Examiners look for it.57

If environmental structures are shown (by the use of broken lines asexplained below), they must be clearly designated as the environmentin the specification.58 The following statement is used to describe theenvironmental structures in the drawing: “The broken lines showing[name of structure] are for illustrative purposes only and form no partof the claimed design.”59 Such a statement is used in the description ofFigure 1 of Exhibit 11-5.

In certain situations, discussed below, multiple embodiments of adesign invention can be presented in the drawings of a single designpatent. In that case, the specification should make it clear thatmultiple embodiments are disclosed and should particularize thedifferences between each embodiment.60 Multiple embodiments arepresented in Exhibit 11-3.

Three types of statements are not permissible in the specification:61

1. A disclaimer statement directed to any portion of the claimeddesign that is shown in solid lines in the drawings.

2. Statements which describe or suggest modification of theclaimed design which are not illustrated in the drawingdisclosure.

3. Statements describing matters which are constructions unre-lated to the design.

[C] ClaimA design patent contains only a single claim, drafted in formal

terms, claiming the ornamental design for the article shown.62 Theclaim should read: “The ornamental design for a [insert nameof article as specified in the title] as shown.” When there is

56. M.P.E.P. § 1503.01.57. Guidelines for Examination of Design Patent Applications for Computer-

Generated Icons, 61 Fed. Reg. 11,380 (Mar. 20, 1996); PTO Notice onDesign Patent Applications for Computer-Generated Icons, Pat. Trademark& Copyright J. (BNA) (Mar. 21, 1996).

58. M.P.E.P. § 1503.02.59. Id.60. M.P.E.P. § 1504.05.61. M.P.E.P. § 1503.01.62. 37 C.F.R. § 1.153.


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properly included written descriptive matter in the specification, thewords “as shown” should be replaced with the words “as shown anddescribed.”63

Even if multiple embodiments of a design are shown in thedrawings, it is not necessary to assert additional claims.64

Since only a single claim is allowed, it becomes difficult to claim thedesign configuration of several similar articles that are not patentablydistinct over one another. In that situation, the claim can be properlyextended to cover several articles. For example, to claim a design thatcan be applied to a group of associated items (such as surface orna-mentation on a set of dishes), the applicant can draft the claim to coverthe more generic form of the articles or simply state in the specificationthat the design can be used on other articles. It is not necessary toobtain separate design patents for each object within the set ofarticles.65 This is allowed on the following rationale: “The principalvalue of many of the most beautiful designs resides exactly in theadaptability of the design to several forms of articles.”66 For example, toclaim a design on saucers, dishes, cups, and similar items that are madeof glass, the claim could read “the ornamental design for a glass articleas shown.” Similarly, “Handle for an article of flatware” could claim thedesign for use on spoons, forks, and knives shown in Exhibit 11-6.

§ 11:3 Drawings

§ 11:3.1 Unitary Design Concept

In general, the drawings of a design patent can present multipleembodiments of a design.67 The C.C.P.A. rejected the argument thatthe singular form of the language of 35 U.S.C. § 171, which grantsdesign patents only for “an article of manufacture” (emphasis added),should be judicially construed to signify that only a single article canbe presented in a design patent, not a plurality of articles.68

Under the unitary design concept rule, multiple articles or embodi-ments of a design can be shown in a single application if (1) the articlespresent a unitary design concept, and (2) the designs are not suffi-ciently distinct from each other to allow separate patents to issue.69

63. M.P.E.P. § 1503.01.64. In re Rubinfield, 270 F.2d 391, 123 U.S.P.Q. 210 (C.C.P.A. 1959).65. Ex parte Andrews, 1917 Dec. Comm’r Pat. 13, 234 Off. Gaz. Pat. Office

373 (Comm’r Pat. 1917).66. Id.67. In re Rubinfield, 270 F.2d 391, 123 U.S.P.Q. 210 (C.C.P.A. 1959), cert.

denied, 362 U.S. 903 (1960).68. Id.69. M.P.E.P. § 1504.05. These provisions are not in the 1995 versions of the

M.P.E.P. Thus, it is uncertain if the Patent Office will continue to followthis guideline.


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For example, two bookends representing the head and tail of a dogform a unitary design concept even though they are separate objects. Ifeither bookend were missing, the complete effect of the design—thatof a dog with an excessively long body—would be lost. Similarly, theindividual letters of a complete type set can be shown in a singleapplication (Exhibit 11-7), since they are part of a unitary designconcept.

The drawings cannot present independent or distinct designs.70

Designs are independent if there is no apparent relationship betweenthe two or more subjects shown in the drawings, that is, they areunconnected in both design and operation. For example, a pair ofeyeglasses and a door handle, or a bicycle and a camera, are uncon-nected in either design or operation. Designs are distinct if the two ormore subjects presented, although related, are patentably distinct(novel and nonobvious) over each other. For example, the alternativeembodiments of the photograph display that are presented inExhibit 11-3 are not patentably distinct from each other. However, acombination of segregable parts that form patentably distinct inven-tions cannot be claimed in a single design patent.71 The only way toprotect the distinctive design of each part is to file separate designpatent applications for each segregable part.72

A disadvantage of having multiple designs in a single applicationcan occur where the examiner determines there are independent anddistinct designs. If divisional applications are not filed on nonelecteddesigns, they are deemed dedicated to the public, which limits thescope of any issued patent.73

§ 11:3.2 Requirements for Adequate Drawings

The actual article embodying the design must be shown in thedrawings. The drawings cannot merely show an abstract design themethat is separate and apart from the particular article to which theornamentation is applied.74 For example, if the surface ornamentationon a bathing cap is claimed, the drawings must present an actualbathing cap bearing the claimed design. To emphasize that it is thesurface ornamentation and not the cap that is claimed, broken linescan be used to outline the cap itself and solid lines used to outline the

70. Id.71. Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 U.S.P.Q. 562 (D.D.C.

1965).72. Ex parte Sanford, 1914 Dec. Comm’r Pat. 69 (Comm’r Pat. 1914).73. Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694

(Fed. Cir. 2014).74. Ex parte Guinzburg, 1925 Dec. Comm’r Pat. 159 (Comm’r Pat. 1925).


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surface ornamentation on the cap.75 The broken lines of Exhibit 11-5signify the environment of the dial top-housing. Virtual designs suchas those used with a computer are typically shown with a schematiccomputer, smartphone, or tablet in broken lines.75.1

It is important that the drawings show all the external features ofthe claimed design. If the whole exterior or all of the surface orna-mentation of the article is not shown in the drawings, the disclosurecan be inadequate.76 Design patents protect the distinctive appearanceof the whole article of manufacture, not the appearance of dissectedindividual elements of a design or article.77 For example, a televisionreceiver design patent was declared invalid because it did not containany drawings of the back of the receiver.78 The court found thedisclosure inadequate because (1) it was necessary to reveal the designof the back of the TV set for a complete disclosure of the wholereceiver, and (2) the complete aesthetic design of the receiver wouldremain unknown until a specific form of back panel was shown. Thefact that the back of a television receiver is unimportant because it isnot seen in advertisements or in the home was found to be irrelevantto the completeness of the disclosure. Nor did the court find persua-sive the argument that the back of the set need not be disclosedbecause it was unornamented.79

The adequacy of the disclosure of the drawings is also determinedby reference to the scope of the invention that is claimed.80 In thetelevision set case, the patent claimed an ornamental design for“television receivers.” Consequently, the whole receiver had to beshown in the drawings. Drawings that showed only the front, top,and sides of the receiver but not the back were deemed inadequate,since the design for the whole television receiver was claimed. Thus,the breadth of the disclosure of the drawings must match the breadthof the claimed design.

The lesson learned from this case is that it is better to have toomany than too few drawings in the patent application. It is better tospend a few extra dollars and have too many drawings than to lose thevalue of a patent that is held invalid because in the name of economy a

75. Id.75.1. Jason J. Du Mont & Mark D. Janis, Virtual Designs, 17 STAN. TECH. L. REV.

107 (2014).76. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 U.S.P.Q. 413 (D. Del.

1961).77. Id.78. Id.79. Id.80. Id.


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sheet of drawings was not ordered. Note the number of drawingsshown in the illustrative example of Exhibit 11-3. A total of sevendrawings are shown for the square design and five for the rectangularembodiment. Similarly, Exhibit 11-8 shows numerous views of theclaimed design.

A design patent will not be invalidated for failure to show sides ofan article that are identical to sides shown. It is not necessary todisclose these views if the symmetry of the article can be deduced fromthe views shown.81 In Exhibit 11-3, Figure 4 shows a side view of theclaimed design. Since the article is symmetrical about this view, it wasnecessary to show only one side. However, the top and bottom planviews of the article of Exhibit 11-3 are not symmetrical, that is, the topsurface is beveled and the bottom is flat. Consequently, it wasnecessary to show both the top and bottom of the article.

§ 11:3.3 Drawing the Invention

As with utility patents, perspective, plan, and elevation views areused to illustrate the invention. Since the drawings form the entiredisclosure of the patent, they must contain a sufficient number ofviews to constitute a complete disclosure.82 Normally, drawing figuresshould be provided showing the article, at a minimum, from each of itssix normal views. Additional perspective views should also be providedif helpful in disclosing the design.83

However, views that are merely duplicative of other views, andviews that are plain and include no ornamentality, may be omitted ifthe specification makes this clear. Thus, if the left and right sides of anarticle are identical or symmetrical, only one side needs to be shown inthe drawings, and a statement can be included in the description thatthe other side is identical or symmetrical.84 Accordingly, single viewsof the ornamental design of the glass panel in Exhibit 11-4 and thescarf of Exhibit 11-9 are sufficient disclosure.

Likewise, if an article has a plain bottom, a view of the bottom canbe omitted if the description includes a statement that the bottom isplain and unornamented.85 In fact, it is critical to draw features of thearticle that are not part of the invention in dashed lines as shown inExhibit 11-5 and describe them as being “for illustrative purposes onlyand forming no part of the claimed design.” Otherwise, an infringer

81. Moore v. Stewart, 600 F. Supp. 655, 225 U.S.P.Q. 313 (W.D. Ark. 1985).82. 37 C.F.R. § 1.152.83. M.P.E.P. § 1503.02.84. Id.85. Id.


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can avoid liability by not incorporating into his design the nonorna-mental features shown in the drawings.86

Sectional views are not generally illustrated in a design patent.Design patents concern the subject matter of the exterior of thestructure and not its interior. Consequently, sectional views presentedfor the purpose of showing functional features of the interior of thearticle are irrelevant and rejected.87 However, they are allowed inunusual cases where a sectional view brings out the claimed designmore clearly,88 such as to show the cross-section of the flatware handleof Exhibit 11-6.

For computer-generated icons, the Patent Office accepted the viewthat a single drawing may be insufficient to show the claimed inven-tion. The Patent Office requires a sufficient number of views toconstitute a complete disclosure of the appearance of the monitor,display panel, or the like.89 However, the central processing unit thatgenerates the icons need not be shown.90

Broken lines are used to disclose the environment related to theclaimed design and to define the bounds of the claim. Thus, portionsof an article that do not contribute to the patentability of the design,that is, do not add novelty to the article or do not render the designnonobvious, should be shown in broken lines.91

§ 11:3.4 Formal Requirements

The drawings must conform to the same formal rules defined forutility patents.92 They must meet identical requirements regarding thetype and size of paper, margins, scale of illustrations, and arrangementof views. The necessity for design patent drawings to be well-executed,clear, and complete cannot be overemphasized, since the drawingconstitutes the entire disclosure.93

86. Door-Master Corp. v. Yorktowne, Inc., 258 F.3d 1308, 59 U.S.P.Q.2d 1472(Fed. Cir. 2001) (rear features of door not shown when door is closed arepart of design since not shown in dashed lines, and thus there is noinfringement because allegedly infringing design did not include the rearfeatures).

87. M.P.E.P. § 1503.02.88. Ex parte Lohman, 1912 Dec. Comm’r Pat. 336, 1184 Off. Gaz. Pat. Office

287 (Comm’r Pat. 1912).89. Guidelines for Examination of Design Patent Applications for Computer-

Generated Icons, 61 Fed. Reg. 11,380 (Mar. 20, 1996); PTO Notice onDesign Patent Applications for Computer-Generated Icons, Pat. Trademark& Copyright J. (BNA) (Mar. 21, 1996).

90. Id.91. Saidman, Design Patentees: Don’t Get Unglued by Elmer, or the Single

Most Important Thing to Know About the Preparation of Design PatentApplications, 78 J. PAT. & TRADEMARK OFF. SOC’Y 311 (1996).

92. 37 C.F.R. § 1.152.93. M.P.E.P. § 1503.02.


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The ornamental appearance of an article includes any indicia,lettering, or other ornamentation.94 However, surface indicia per seare not proper subject matter for a design patent; they must beembodied in an article of manufacture. The presence of surface indiciain a design drawing will normally be considered prima facie evidencethat the inventor considered the surface indicia shown in the drawingto be an integral part of the claimed design.95

Black-and-white photographs are permitted in design patent appli-cations. Color photographs and color drawings are not permitted indesign applications in the absence of a granted petition pursuant to37 C.F.R. § 1.84(b). If the drawings are filed in color, the publishedapplication has the drawings in black and white with a notice thatthe Patent Office has a color image on file. Photographs and inkdrawings cannot be combined as formal drawings in one application.Photographs are not allowed to disclose environmental structure.96

Exhibit 11-9 shows a photograph of a design claimed in a patent forscarves.

It is possible to use a design patent to protect an animated userinterface. This is done by filing successive images of the animation asseparate images.

§ 11:3.5 Illustrative Styles and Symbols

The drawings of a design patent are governed by the same illustrativestyles that are used for utility patents. As with utility patents, thedrawings should be appropriately shaded to clearly show the characterand contour of the surfaces represented.97 Shading is particularlyimportant when showing three-dimensional articles or when it isnecessary to delineate plain, concave, convex, raised, or depressedsurfaces, or to distinguish between open and closed areas of the design.98

The ornamental design that is claimed must be shown in solidlines. However, broken lines can be used to depict the unclaimedenvironment surrounding the claimed design. These lines allow theclaimed design to be distinguished from the environment that is notpart of the claims.99 The environmental structure should be shownonly when the nature and intended application of the claimed designcannot be otherwise indicated adequately by a reasonably concisetitle or statement in the specification.100 Exhibit 11-5 shows a design

94. Id.95. Id.96. 37 C.F.R. § 1.152.97. Id.98. M.P.E.P. § 1503.02.99. Id.

100. Id.


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patent claiming the design of a telephone dial top-housing; theunclaimed structure of the whole telephone is shown in broken lines.Similarly, the broken lines of Exhibit 11-6 also show the unclaimedenvironment.

Broken lines, and particularly dot-dashed lines, can be used todefine the boundaries of a claimed design where the boundary doesnot exist in the real-world product. It is understood that the claimeddesign extends to the boundary, but does not include the boundary.101

Broken lines can also be used for:

1. Lines of indeterminate length, such as the wires leading fromheadphones to a jack, where the broken line is used in themiddle of a solid line;

2. When the length of an object is indeterminate, such as adental toothpaste strip; and

3. To show different embodiments of an invention, where oneembodiment shows the entire product and another embodi-ment includes broken lines.

Environmental broken lines should not obscure or confuse theappearance of the claimed design. They should be drawn thinnerthan the lines used to depict the claimed design. In addition, brokenlines should not intrude upon or cross the design of the claimedarticle. If the broken lines must necessarily cross or intrude upon thelines of the claimed design, the illustration should be included as aseparate figure.102

§ 11:4 Information Disclosure Statement

As with utility patents, the applicant for a design patent has a dutyto disclose to the Patent Office all prior art references that negate thenovelty or nonobviousness of the design and that present potentialstatutory bars. Both 35 U.S.C. §§ 102 and 103 apply with full force todesign patents. These disclosure requirements are essentially the sameas those for utility patents as described in chapter 10.

However, the definitions of novelty and nonobviousness for designpatents are different for design patents than for utility patents.Claiming priority under 35 U.S.C. § 119, and the time for a bar under35 U.S.C. § 102(d), is six months rather than twelve months.103 Thesedifferences affect the scope of the prior art that needs to be cited in aninformation disclosure statement, and thus are discussed below.

101. Id.; see also In re Owens, 710 F.3d 1362 (Fed. Cir. 2013).102. M.P.E.P. § 1503.02.103. 35 U.S.C. § 172.

§ 11:4Design Patent Applications

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§ 11:4.1 Novelty

For a design to be considered novel, the ordinary observer must findthat the overall appearance of the design at issue is different from anysingle prior art design.104 Unlike the novelty test for utility patents,the structure or function of the article is not considered, and theinventive novelty of the design must reside in the article’s externalshape or surface ornamentation.105 The design is not novel if a singleprior art reference shows a substantially identical design.106 Prior artreferences cannot be combined to determine the question of novelty.

§ 11:4.2 Nonobviousness

For a design to be considered nonobvious, the appearance of theclaimed design cannot be an obvious derivation of prior art referencesto the ordinary designer.107 The ordinary designer is a designer ofordinary capabilities who designs articles of the type presented in theapplication.108 Prior art references can be combined to determine thequestion of obviousness if the references are “so related that theappearance of certain ornamental features in the one would suggestthe application of those features in the other.”109

§ 11:4.3 Scope of Prior Art

The scope of the prior art that negates the novelty or nonobvious-ness of a design is much broader than that for utility patents. Inutility patents, the scope of the search extends to cover only thoseanalogous arts that reflect the essential function or utility of theinvention. For example, a tea mixer and a concrete mixer are ofanalogous arts, since the utility of both lies in their ability to performthe task of mixing.110

However, in design cases, the definition of analogous art is muchbroader than for utility applications. In the design cases, the definitionencompasses any art that is so related that the appearance of certainornamental features in that art would suggest the application of thosefeatures in the art at issue.111 In a design patent, any article with asubstantially similar appearance to that of the claimed design is prior

104. In re Bartlett, 300 F.2d 942, 133 U.S.P.Q. 204 (C.C.P.A. 1962).105. M.P.E.P. § 1504.106. In re Bartlett, 300 F.2d 942, 133 U.S.P.Q. 204 (C.C.P.A. 1962).107. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 U.S.P.Q. 97 (Fed.

Cir. 1984).108. Id. at 1443; In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981).109. In re Boldt, 344 F.2d 990, 991 (C.C.P.A. 1965).110. M.P.E.P. § 904.01(c).111. In re Boldt, 344 F.2d 990 (C.C.P.A. 1965).

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art, regardless of the use or function of the article, since the use of thearticle has no bearing on its patentability as a design.112 Thus, awallpaper design can anticipate the design on a piece of crockery.113

Similarly, the ornamental design of the glass panel of Exhibit 11-4can be anticipated by the same ornamental design placed on the doorof an oven or other article.

Consequently, the scope of art disclosed in an information disclo-sure statement for a design patent is very broad. It is recommendedthat, at the very least, all mechanical classes encompassing inventionsof the same general type be disclosed.114 Both design and utilitypatents should be disclosed, since either type of patent can anticipatethe claimed design. Similarly, information in catalogs and tradejournals should also be disclosed.115

§ 11:5 Expedited Examination

It is possible to obtain expedited examination of design applica-tions. The procedure is available to all applicants who first conduct apreliminary examination search and file a request for expedited treat-ment. The requirements for such a request are: (1) a statement that apreexamination search was conducted, which must also indicate thefield of search; (2) an information disclosure statement in compliancewith 37 C.F.R. § 1.98; (3) the fee specified in 37 C.F.R. § 1.17; and(4) formal drawings.116 A form for requesting expedited examinationof a design application is shown as Exhibit 11-10.

112. M.P.E.P. § 1504.113. In re Glavas, 230 F.2d 447 (C.C.P.A. 1956).114. M.P.E.P. § 1504.115. Id.116. 37 C.F.R. § 1.155.

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§ 11:5Design Patent Applications

© Practising Law Institute© Practising Law Institute

Exhibit 11-1

Design Patent ApplicationTransmittal

11EX–1


Exhibit 11-2

Assignment for Design Patent

11EX–3


Exhibit 11-3

Photograph Display Design Patent

11EX–5


11EX–6

Exhibit 11-3 HOW TO WRITE A PATENT APPLICATION


11EX–7

Exhibit 11-3Design Patent Applications


Exhibit 11-4

Decorative Glass Panel Design Patent

11EX–9


11EX–10



Exhibit 11-5

Dial Top-Housing forTelephone Headset or

Similar Article Design Patent

11EX–11


11EX–12



11EX–13



Exhibit 11-6

Handle for an Article ofFlatware Design Patent

11EX–15


11EX–16



Exhibit 11-7

Font of Type Design Patent

11EX–17


11EX–18



Exhibit 11-8

Automobile Design Patent

11EX–19


11EX–20



11EX–21



11EX–22



Exhibit 11-9

Scarf Design Patent

11EX–23


11EX–24



Exhibit 11-10

Request for Expedited Examinationof a Design Application

(37 C.F.R. § 1.155)

11EX–25

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