1500

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1500

1501
Rules Applicable

1502
Definition of a Design

1503
Elements of a Design Application

1503.01
Specification and Claim

1503.02
Drawing

1504
Examination

1504.01
Segregable Parts

1505
Allowance and Term of Design Patent

1506
Foreign Filing Dates

The right to a patent for a design stems
from:

35 U.S.C. 111. Patents for designs. Whoever in-
vents any new, original and ornamental design for an
article of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this title.

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

## 1501 Rules Applicable

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

The other rules applying only to patents for
designs are set forth in the sections that follow.

## 1502 Definition of a Design

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

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

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

## 1503 Elements of a Design Applica- tion

A design application has essentially the ele-
ments required of an application for a patent

# Design Patents

for a "mechanical" invention or discovery (see
Chapter 600). However, unlike the latter
where a preamble to the specification is no
longer required, a preamble still remains a re-
quirement in a design application (Rule 154).

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

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

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

## 1503.01 Specification and Claim

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

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

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

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

(c) Description, if any.

(d) Claim.

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

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

The title is of great importance in a design
application. It serves to identify the article
in which the design is embodied and which is
shown in the drawing, by the name generally

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used by the public. The title should be to a
specific definite article. Thus a stove would be
called a "Stove" and not a "Heating Device."
The same title is used in the petition, in the
preamble to the specification, in the description
of the drawing, and in the claim. The title
should correspond to the name of the article
shown.

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

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

Any description of the design in the specifi-
cation other than a brief description of the
drawing figures is generally not necessary, for
as a rule the illustration is its own best de-
scription. If there be any such special descrip-
tion 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 "dom-
inant feature" clause. Likewise it is permis-
sible to emphasize some specific point of nov-
elty as a ""characteristic" or an "important"
or an "essential" part of the design. Or, as
stated under "Drawing," recourse may be had
to dotted and full line illustration to dif-
ferentiate between the immaterial and the ma-
terial parts of the design.

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

Only one claim is required or permissible in
a design application and this claim should be
in formal terms to the ornamental design for
the article (specifying name) as shown. (In
re Rubinfield, 1959 C.D. 412; 749 O.G. 274.)

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

## 1503.02 Drawing

Rule 152. Drawing. The design must be represented
by a drawing made in conformity with the rules laid
down for drawings of mechanical inventions and must
contain a sufficient number of views to constitute a

complete disclosure of the appearance of the article.
Appropriate surface shading must be used to show
the character or contour of the surfaces represented.

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

In general, the showing should be strictly
confined to the article on which design patent
protection is sought and no additional disclo-
sure 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 allowed,
and in such cases it is permitted only by show-
ing the same in dotted lines with a statement
inserted in the specification to the effect that
the dotted line showing is for illustrative pur-
poses only.

Dotted or broken line showing is also em-
ployed to show such portions of the article
claimed which are not important. Such a
showing should be explained in the specifica-
tion 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 im-
material 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 dimen-
sions. Occasionally a good perspective view
alone is sufficient.

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

While a sectional view that more clearly
brings out the design is permissible (ex parte
Lohman, 1912 C.D. 336; 184 O.G. 287) those
that are presented for the evident purpose of
including purely structural features, or exhib-
iting mechanical functions, are not favored. It
is the article as seen by the observer, and not
internal structure, which should be shown.

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In design applications, just as in "mechani-
cal" cases, additional or amended illustration
involving new matter is refused entry. The
practice of including in the application when
filed a photograph or model of the article, or
in the case of a flat article, such as cloth, a
sample showing a complete unit of the design

is permissible and may be followed. An in-
sufficient drawing may be fatal to validity.

# 1504 Examination

In design cases as in "mechanical" cases,
novelty and invention are necessary prerequi-

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

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

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

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

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

It is permissible, in a proper case, to illustrate
more than one embodiment of a design invention
in a single application. However, such embodi-
ments can be presented only if they involve a
single inventive concept and are not patentably
distinct from each other. An unreasonable
number of embodiments of the same invention
will not be permitted. The disclosure of plural
embodiments does not require or justify more
than a single claim which claim must be in
formal terms to the ornamental design for an
article as shown and described. In re Rubin-
field 1959 C.D. 412; 749 O.G. 274.

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

When an assembly of articles is shown, the
question often presented is whether such as-
sembly does in fact constitute a unitary design,
or is merely an aggregation of designs. If it is
the latter, it is a ground for a rejection of the
claim.

Under the liberal design practice, many
things are regarded as unitary designs when
the same thing would not support a combina-
tion 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 common theme
running through them, or because of some neces-
sary interfitting relationship.

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

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

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

# 1504.01 Segregable Parts

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

# 1505 Allowance and Term of Design Patent

Rule 155. Issue and term of design patents. If, on
examination, it shall appear that the applicant is

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entitled to a design patent under the law, a notice of
allowance will be sent to him, his attorney or his
agent, calling for the payment of an issue fee in an
appropriate amount dependent on the duration of the
term desired by the applicant. If this issue fee is not
paid within three months of the date of the notice of
allowance, the application shall be regarded as aban-
doned. If this fee is not timely paid but is submitted,
with the fee for delayed payment, within three months
of its due date with a verified showing of sufficient
cause for the late payment, it may be accepted by the
Commissioner as though no abandonment had ever
occurred.

The filing fee is now the same for all design
applications. There is also an issue fee which
varies according to the term requested. These
changes apply only to design applications filed
on or after October 25, 1965. Design applica-
tions filed before this date are governed by the
practice previously in effect which is stated in
the following two paragraphs in brackets.

[It is unnecessary upon filing a design appli-
cation to pay the fee for the maximum term
of 14 years. Payment of a ten dollar fee en-
titles the applicant to an examination as to
patentability and to a patent for 31/2 years if
found patentable. Request may be made at
the time of filing, or at any time before allow-
ance, that applicant be notified before allow-
ance, so that he may extend the term should he
desire. Upon sending such notice the appli-
cation is withheld 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 applica-
tion is thereupon allowed, and goes to patent
for the term corresponding to the fee origi-
nally paid.]

[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 application is passed to
issue. Furthermore, issuance of a design pat-
ent may not be delayed under the provisions
of Rule 314 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 103.]

The term of a design patent may not be ex-
tended by reissue.

## 1506 Foreign Filing Dates

The provisions of 35 U.S.C. 119 (Quoted in
201.13) apply also to design applications. It
is emphasized however, in the case of a design
application that before the application can
obtain the benefit of a foreign filing date, it
must be filed within six months from the ear-
liest date on which any foreign application
for the same design was filed.

35 U.S.C. 172. Right of priority. The right of prior-
ity provided for by section 119 of this title and the
time specified in section 102(d) shall be six months
in the case of designs.

The time for filing the papers required by the
statute is specified in the second paragraph of
Rule 55. See 201.15(a). In design applications
filed on or after October 25, 1965, the latest time
at which the papers may be filed is the date for
payment of the issue fee unless earlier required
as specified in Rule 55. In design applications
filed prior to October 25, 1965, the papers may
be filed any time before the issuance of the
design patent unless earlier required since there
is no final fee in these applications.

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