1700

OCR transcription for search; preserved printed pages are authoritative

# Section 17. DESIGN PATENTS

17-1. Rules Applicable

-2. Definition of a Design

-3. Elements of a Design Application

-4.
Specification and Claim

-5.
Drawing

-6.
Examination

-7. Segregable Parts

-8.
Classification of Design Patents

-9. Allowance and Term of Design Patent

10\. Foreign Filing Dates

<!-- PageBreak -->

## 17-1. Rules Applicable

Rule 20.1 Rules applicable. The rules
relating to applications for patents for in-
ventions or discoveries are also applicable
to applications for patents for designs ex-
cept as otherwise provided.

The right to a patent for a design stems from Section
4929 R.S. reproduced herebelow:

Seo. 4929 R.S. Any person who has in-
vented any new, original, and ornamental de-
sign for an article of manufacture, not known
or used by others in this country before his
invention thereof, and not patented or de-
scribed in any printed publication in this or
any foreign country before his invention there-
of, or more than one year prior to his applica-
tion, and not in public use or on sale in this
country for more than one year prior to his
application, unless the same is proved to have
been abandoned, may, upon payment of the fees
required by law and other due proceedings had,
the same as in cases of inventions or discov-
eries covered by section 4886, obtain a patent
therefor.

17-2.
Definition of A Design

The design of an object consists of the visual char-
acteristics or aspects displayed by the object. It is the
appearance presented by the object which creates an impres-
sion, through the eye" upon the mind of the observer.

As a design is manifested in appearance the subject
matter of a design application may relate to the configura-
tion 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 surface ornamentation.
It must be a definite, preconceived thing, capable of repro-
duction and not merely the chance result of a method.

17-3.
Elements of A Design Application

A design application has essentially the elements re-
quired of a utility application. (See Sec. 8) However,

<!-- PageBreak -->

unlike the utility application where a preamble to the speci-
fication is no longer required, a preamble still remains a
requirement in a design application (Rule 20.48) and is
printed as part of the specification of the design patent.

If the single signature form (see 8-6) be used it must
be accompanied by a separate sheet of specification which in-
cludes a preamble.

17-4.
Specification and Claim

Rule 20.3 Title, description and claim.

The title of the design must designate the
specific article for which the design has been
invented. No specific description, other than
a reference to the drawing, is ordinarily re-
quired or permitted. 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 not re-
quired or permitted. See form ----.

Rule 20.4 Arrangement of specification.

The following order of arrangement should be
observed in framing design specifications:

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

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

(c) Description, if any.

(d) Claim.

(e) Signature of applicant.

Seo Rule 8.7.

The specification follows the form in the Rules of
Practice.

The most important thing is the title. This 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 arti-
ole. Thus a stove would be called a "Stove" and not a "Heat-
ing Device." The same title is used in the preamble to the
specification, in the description of the drawing, and in the
claim. The title should correspond to the name of the
article shown.

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

<!-- PageBreak -->

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

Any description of the 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 be any such special
description it must be of the appearance of the article
and not its manner of construction nor its function.

Where there is more than one feature of novelty in
a case, the principal feature may be emphasized in the
description by a "dominant feature" clause. Likewise, if
prior art has been cited which bears a general resemblance
to the design under examination, it is permissible to empha-
size some specific point of novelty as a "characteristic".
or an "important" or an "essential" part of the design, or
as "the dominant feature." Or, as stated under "Drawing,"
recourse may be had to dotted and full line illustration
to differentiate between the immaterial and the material
parts of the design.

Statements in the specification which describe or
suggest modifications of the design shown on the drawing
are not permitted. Similarly a statement amounting to a
disclaimer is improper and not permitted ..

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.

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

17-5.

### Drawing

Rule 20.2 Drawing. The design must be
represented by a drawing made to conform to
the rules laid down for drawings of mechanical
inventions and must contain a sufficient num-
ber of views to constitute a complete disclosure
of the appearance of the article. Appropriate
surface shading must be used to show the char-
acter or contour of the surfaces represented.

The necessity for good drawings in a design application
cannot be overemphasized. As the drawing constitutes substan-
tially the whole disclosure of the design, it is of utmost
importance that it be so well executed both na to clarity of

<!-- PageBreak -->

showing and completeness that nothing regarding the shape,
configuration and surface ornamentation of the article sought
to be patented is left to conjecture.

In general, the showing should be strictly confined
to the article on which design patent protection is sought
and no additional disclosure in the nature of structure to
illustrate environmental use or association with other
apparatus not an actual part of the design, is ordinarily
permitted. Only in those cases where clarity of disclosure
would be greatly sacrificed is such extraneous showing al-
lowed, and in such cases it is permitted only by showing
the same in dotted lines with a statement inserted in the
specification to the effect that the dotted line showing is
for illustrative purposes only.

Dotted or broken line showing is.also employed to
show such portions of the article claimed which are not im-
portant. Such a showing should be explained in the specifi-
cation by a statement that the dominant features of the design
reside in the portions shown in full lines. In every case
dotted line showing is notice that the portion so shown is an
immaterial part of the design.

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

"The drawing figures should be appropriately surface
shaded to show character or contour of the surfaces 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 depressed 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 0.0. 2871 those that are presented for the evident pur-
pose of including purely structural features, or exhibiting
mechanical function, 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 mechanical cases.
additional illustration involving new matter is refused entry.
The practice of including in the application when filed a
photograph of the article, or in the case of a flat article,
such as cloth, a sample of sey 4x5 inches is often followed .
An insufficient drawing may be fatal to validity.

<!-- PageBreak -->

17-6.

### Examination

In designs as in mechanical cases, novelty and
invention are necessary prerequisites to the grant of a
patent. In the case of designs, the inventive novelty re-
sides in the shape or configuration or ornamentation as
determining the appearance or visual aspect of the object,
which must be an article of manufacture in contradistinction
to a machine or composition of matter.

The fact that an object is new and ornamental is not
conclusive of its patentability as a design, since the
ornate effect may be due to color, workmanship, finish, and
the like, factors 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 analo-
gous classes. If no satisfactory anticipation be found here,
the search must be extended to the mechanical division han-
dling 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 appearance
only, the test to be applied in determining the question of
anticipation is identity or similarity of appearance. If a
reference is found that is identical in appearance, the
question of patentability is, of course, definitely settled
in the negative ..

However, it more often occurs that the reference
differs in some respects from the design claimed and the
question of invention is thus presented.Dos 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?

Two or more articles are often shown in the drawing
of an application, while the law permits only a single design
in one case. If it is clear that applicant has disclosed
and is attempting to claim two or more different designs or
variations of the same design, he is required to elect one
and cancel the other (Ex parte Whittington, 1926 C.D. 51;
347 0.0. 281 )

If in response to a requirement to cloet the applicant
traverses the requirement on its merits, i. e. , argues that
only one design in fact is disclosed, the requirement, before
it may be repeated, must be approved by the Classification
Examiner ( Rule 11.3) just as in mechanical cases

<!-- PageBreak -->

The question most often presented is whether the
assembly of articles shown does in fact constitute a uni-
tary design, or is merely an aggregation of designs. If
it is the letter it is a ground for a rejection of the
claim, and not for a requirement to elect.

Under the liberal design practice, many things are
regarded as unitary designs because of their association
when on sale, when the same thing would not support a com-
bination claim in a mechanical patent. Thus a "combined
Inkwell, stand and ash tray" might consist of separable
parts, and yet form a unitary design, because of some com-
mon theme running through them, or because intended to be
sold as a unit.

When an applicant presents two or more applications
which are allowable over the prior art but which do not in
the opinion of the Examiner differ patentably from one
another, a requirement for election between the applications
is made. If applicant refuses to elect, one of the applica-
tions is chosen by the Examinar and allowed and the other
(or others) rejected thereon. (Harpignies, Ms. Dec. Vol.
167 page 329, in Patent File of Des. Pat. D - 136,559
Oct. 26, 1943 )

As novelty of configuration or surface ornamentation
is a requisito for design patentability, 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 issue on the
sume subject matter, however, there must be a clear patent-
able distinction between them. Where two applications
utility and design, involve the same inventive concept and
In effect claim the amme patentable invention two patents
may not issue and a rejection on double patenting may result.
(In re Barber, 1936 C.D. 184, 465 O.G. 724 )

17-7.

### Segregable Parts

Since under the law a design patent covers only the
design as nn entirety and does not extend to segregable
parts (contrasting in this respect to the copyright low
which extends protection to "all the copyrightable component
parts") , the only way to protect such parta is by taking out
separate patents therefor. (Ex parte Sanford, 1914 C.D. 69;
204 0 G. 1346 )

17-8
Classification of Design Patents

The classification of design patents has evolved along
lines different from that of mechanical patents, or that pro-

<!-- PageBreak -->

vided for trade-marks. The classes are designated by titles,
such as "Beds," "Jewelry," "Paper Manufactures," "Stoves and
Furnaces" etc., which are arranged alphabetically, and are
divided into sub-classes.

The classes and sub-classes now found in the search
room have numerical designations such as is given mechanical
patents.

17-9.
Allowance and Term of Design Patent

Rule 20.5 Term of design patent The
petition for a design patent should specify
the term, 33, 7, or 14 years, for which a
design patent is sought; but if no term is
specified, or if the term specified Is greater
than that covered by the fee peid, the appli-
cation will be accepted as filed for a term
corresponding to the fee received, nud the
applicant so notified.

Where the applicant initially requests
that the patent issue for one of the shorter
terms, he may, at any time before the appli -
cation is allowed and passed to issue, upon
the payment of the additional sum necessary
amend his application by requesting that the
patent be issued for a longer term In order
to afford the applicant an opportunity for
making such an amendment and paying, the
additional sum, the Office may notify him
before the application is allowed and passed
to issue unless otherwise directed , but failure
of the Office to send or of the applicant to
receive such notification will not warrant
any change in the term requested after the
application is allowed and passed to ihatte
(Founded or Section 4931 R.S .)

It is unnecessary upon filing a dealen application
to pay the fee for the maximum term of IL years Payment
of a ten dollar fee entitles the applicant to an examination
as to patentability and to a patent for 39 yours if found
patentable. Request may be made at the time of filing, or
at any time before allowance. that applicant be notified
before allowance, so that he may extend the term should he
desire. Upon sending such notice the application is with-
held from allowance for 30 days to permit the filing of the
additional fee for such longer term as may be selected. If
no response is received to such notice the application 18
thereupon allowed, and goes to patent for the term corres-
ponding to the fee originally paid

<!-- PageBreak -->

It is to be noted that failure on the part of the.
Office to send or of the applicant to receive such notice
will not warrant any change in the term after the applica-
tion is passed to issue. Furthermore, issuance of a
design patent may not be delayed under the provisions of
Rule 34.4 as is the case with utility patent applications
and any suspension beyond the thirty day notice period
must be obtained in accordance with the provisions of Rule
19.2.

The term of a design patent may not be extended by
reissue.

17-10.

### Foreign Filing Dates

The provisions of Seo. 4887 R.S. (4-1-13) and Public
Law 690 (4-1-15) apply also to design applications.