1500

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# Chapter 1500 Design Patents

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. 73 ; R. S. 4929, 4933. Patents for designs ;
how obtained; regulations applicable. Any person who
has invented any new, original, and ornamental design
for an article of manufacture, not known or used by
others in this country before his invention thereof, and
not patented or described in any printed publication
in this or any foreign country before his invention
thereof, or more than one year prior to his application,
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
discoveries covered by section 31 [R. S. 4886 ; 35 U. S. C.
31] of this title, obtain a patent therefor.

All the regulations and provisions which apply to
obtaining or protecting patents for inventions or dis-
coveries not inconsistent with the provisions of this
title, shall apply to patents for designs.

## 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.

[Old Rule 81]

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 visual
characteristics or aspects displayed by the ob-
ject. It is the appearance presented by the ob-
ject 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 surface
ornamentation. It must be a definite, precon-

ceived thing, capable of reproduction and not
merely the chance result of a method.

## 1503 Elements of a Design Application

A design application has essentially the ele-
ments required of an application for a patent
for a "mechanical" invention or discovery (see
Chapter 600). However, unlike the latter where
a preamble to the specification is no longer re-
quired, a preamble still remains a requirement
in a design application (Rule 154) and is
printed as part of the specification of the design
patent.

If the single signature form (see 605.04 (a) )
be used it must be accompanied by a separate
sheet of specification which includes a pream-
ble.

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

If the name is typewritten without the middle
initial or name, but the signature contains the
middle initial or name, amendment should be
required that the typewritten name conform
with applicant's signature.

## 1503.01 Specification and Claim

Rule 153 Title, description and claim. The title of
the design must designate the particular article. No
specific description, other than a reference to the draw-
ing, is ordinarily required 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 neither required
nor permitted.

[Old Rule 81]

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

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

(b) Description of the figure or figures of the draw-
ing.

(c) Description, if any.

(d) Claim.

(e) Signature of applicant.

See rule 58.

[Old Rule 82]

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 pre-
amble 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 singular-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 specifica-
tion other than a brief description of the draw-
ing figures is generally not necessary, for as
a rule the illustration is its own best descrip-
tion. 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 nov-
elty in a case, the principal feature may be em-
phasized 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
emphasize some specific point of novelty as a
"characteristic" or an "important" or an "essen-
tial" part of the design, or as "the dominant
feature." Or, as stated under "Drawing," re-
course may be had to dotted and full line illus-
tration 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 im-
proper 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 special description, the claim
must include the words, "and described" fol-
lowing "shown."

## 1503.02 Drawing

Rule 152 Drawing. The design must be repre-
sented 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.

[Old Rule 84]

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 importance
that it be so well executed both as to clarity of
showing and completeness that nothing regard-
ing the shape, configuration and surface orna-
mentation 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 en-
vironmental 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 showing
the same in dotted lines with a statement in-
serted in the specification to the effect that the
dotted line showing is for illustrative purposes
only.

Dotted or broken line showing is also em-
ployed to show such portions of the article
claimed which are not important. Such a show-
ing should be explained in the specification 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 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 dimensional
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 O. G. 287) those
that are presented for the evident purpose of
including purely structural features, or exihib-
iting 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 "mechani-
cal" cases, additional illustration involving new
matter is refused entry. The practice of in-

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cluding in the application when filed a photo-
graph 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 insufficient drawing may
be fatal to validity.

## 1504 Examination

In design cases as in "mechanical" cases,
novelty and invention are necessary prereq-
uisites 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, article
of manufacture or the constitution of a compo-
sition 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 determining 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 divi-
sion 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 ?

Two or more articles are often shown in the
drawing of an application, while the law per-
mits only a single design in one case. If it is
clear that applicant has disclosed and is at-
tempting 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 O. G. 281.)

If in response to a requirement to elect, the ap-
plicant traverses the requirement on its merits,
i. e., argues that only one design in fact is dis-
closed, the requirement, before it may be
repeated, must be approved by the Classification
Examiner (Rule 143) just as in mechanical
cases.

The question most often presented is whether
the assembly of articles shown does in fact con-
stitute a unitary design, or is merely an aggrega-
tion of designs. If it is the latter it is a ground
for a rejection of the claim, and not for a re-
quirement 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 combination 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 intended to be sold as a unit.

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 Examiner
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 requisite for design patent-
ability, 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 same subject matter ; however, there must
be a clearly patentable distinction between
them. Where two applications, utility and
design, involve the same inventive concept and
in effect claim the same 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.)

## 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 pro-
tection 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.)

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## 1505 Allowance and Term of Design Patent

Rule 155 Term of design patent. (a) The petition
for a design patent should specify the term, 31/2, 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 paid, the application will be
accepted as filed for a term corresponding to the fee
received, and the applicant so notified.

(b) Where the applicant initially requests that the
patent issue for one of the shorter terms, he may, at
any time before the application is allowed and passed
to issue, upon the payment of the additional sum neces-
sary, 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 issue.
[Old Rule 80]

(Founded on Section 4931 R. S .; 35 U. S. C. 77)
It is unnecessary upon filing a design applica-
tion to pay the fee for the maximum term of 14
years. Payment of a ten dollar fee entitles the
applicant to an examination as to patentabil-

ity 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 allowance, that
applicant be notified before allowance, so that
he may extend the term should he desire. Upon
sending such notice the application 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 application is thereupon allowed,
and goes to patent for the term corresponding
to the fee originally paid.

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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 patent 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 Sec. 4887 R. S., 35 U. S. C.
32 (201.13) and Public Law 690 (201.16) apply
also to design applications.

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