“Retro” Designs: Using Your Utility Portfolio to Expand Design Protection

From gadgets to apparel, retro is all the rage these days. What does this mean for your consumer product patent portfolio?

The obvious strategy is to consistently file design applications covering your product releases, so you’re always covered. But what about products that didn’t have the design interest or IP budget at the time of release, but that are now popular and being knocked off? One strategy is to mine your pending US utility portfolio for the design. A US design application can be filed as a continuation of a utility application. So long as the design is fully supported in an old pending utility application, you should be able to turn that into a viable design application.

Nothing new with “retro”

Design applications are subject to the same conditions as utility applications when it comes to claiming priority under 35 USC § 120.[i] Chief among these conditions may be the requirement that the design claimed be disclosed in the parent utility application in a manner sufficient to satisfy the written description requirement of § 112. Depending on the nature of the design, this may be satisfied by at least a few good-quality, clear, and consistent views of the design, whether line drawings or photographs.

In preparing the drawings for your design continuation, do not stray from the utility disclosure. It is generally acceptable to “formalize” the drawings by removing reference numbers and drawing the design more clearly. Anything more requires a case-by-case review of the whole disclosure to ensure that any new view or detail is completely disclosed in the parent application in the manner required by § 112, otherwise you risk a new matter rejection during prosecution.

Designs are different than utility applications, so keep these points in mind:

• Unlike utility patents, with terms that run from their effective filing dates, design patents have terms of 15 years that run from the date they are granted, even if that extends beyond the term of other related design or utility patents.
• Design applications can’t claim priority back to a provisional utility application, only to a non-provisional.
• Design applications are quicker to prosecute than utility cases, typically taking around 19 months or less from filing to issuance, and can be expedited to issue much more quickly.
• Design applications are not subject to pre-grant publication. The grant of the design patent will be the first time your design filing is made public by the USPTO.

Quick tips for executing your “retro” design strategy

• Don’t think of utility-mining as a replacement for good, prospective design application filing. Especially for products with clear design interest and potential for knock-offs.
• For products that are not intended to be the subject of a design application at the time of release (perhaps because they have questionable design value or a limited available budget), ensure that your counsel understands the interplay between utility and design so that your utility application has the potential to spin off optimized design continuations if and when needed in the future.
• Establish practices in your utility preparation that will leave open the opportunity to later derive design continuations for articles that you are not concurrently filing in separate design applications. Some examples:
  • Don’t skimp on drawing quality. Include at least 2–3 views of each article in its final finished form when appropriate. Single-view designs are possible, but tend to be disfavored by examiners and more challenging to patent. More views are better. The views should be from different angles, showing the character of all surfaces that might be relevant to the design. For example, a typical design might be optimally disclosed by 8 views: 2 opposing perspective views, and 1 each of a front, rear, left, right, top, and bottom view.
  • If discussing the functionality of any aspect of your design in your utility specification, mention and give examples of other shapes or designs that might perform the same function. The idea is to show that the design is not dictated by its function, which can form the basis for an Examiner’s rejection of the design as not ornamental or a later invalidity challenge by an accused infringer.
  • To capitalize on this strategy, make initial utility applications non-provisional, if there’s not a countervailing reason to do otherwise. If you instead start with a provisional application, your design application won’t be able to claim priority to it. This potentially puts your effective filing date for the design application up to a year later than the provisional application’s filing date, depending on when the later non-provisional application is filed. That year may be important to overcome early prior art that may be “inspired” by your initial product launch, or even to overcome your own earlier public disclosures if they occurred more than one year before the non-provisional application was filed.

[i] See MPEP § 1504.20 (“Where the conditions of [§ 120] are met, a design application may be considered a continuing application of an earlier utility application.”)