Design Patent Continuation

A design patent continuation is filed during the lifetime of a previously filed nonprovisional patent application (parent application). Also known as a continuation-in-part (CIP), the continuation:

  • Repeats some of the content in the parent application.
  • Discloses new material in the parent application.
  • Is examined just like any other type of nonprovisional applications.
  • May be used to modify, expand, or add new subject matter to the parent application.

A CIP is attractive because it can be used to modify a previously filed application, allowing the patentee to make minor changes or additions without filing completely new application and paying additional fees.

Design Patents Versus Utility Patents

Though design patents and utility patents have a few things in common, there are some important differences between them. To avoid legal complications and manage intellectual property correctly, it's vital to understand when a design patent application or a utility patent application is needed. A patent attorney can help with this process.

The U.S. Patent and Trademark Office (USPTO) is the sole agency in the U.S. that processes utility patent and design patent applications. But in Europe, the European Patent Office handles utility patents and the Office for Harmonization in the Internal Market handles designs and trademarks.

Also, in the U.S., there are some unique provisions for design applications that do not apply to utility patents. Other statutes, such as 35 U.S.C. § 112, apply to both types.

Continuation-in-Part Design Patent Applications

Deciding if a design patent application claims priority over an earlier filed application is challenging and may require help from a legal attorney, but if possible, filing a design patent application as a CIP of an existing application is usually the best route.

It's important to note that claims within a CIP only receive the priority date of the parent application if the previously filed parent application already disclosed that information. If new information is introduced in the continuation, the CIP application will not inherit the parent application's priority date. Because filing a CIP may affect the assigned priority date and the status of the parent application as prior art, it's important to consider whether amending a previously filed application is the best course of action.

If you do decide that a CIP is your best choice, work with legal counsel to ensure that the CIP does not affect the priority date or the status of the earlier filed application as prior art.

M.P.E.P. § 1504.04 outlines that a CIP affecting the “shape or configuration” of the design disclosed in a prior application does not receive the parent application's filing date. Moreover, the following guidelines were established under 35 U.S.C. 121:

  • 15.74: The CIP receives the benefit of an earlier application only if it is needed (i.e., to avoid intervening prior art).
  • 15.74.01: If new information is disclosed in the continuation, the CIP does not receive the benefit of the parent application's earlier filing date. The parent application is still considered prior art. To qualify as prior art, the parent application must have been filed more than six months before the CIP filing date. Moreover, the parent application must have matured into a form of patent protection before the CIP filing date.
  • 15.75: If a design disclosed in a parent application is not the same design as the design disclosed in the continuation, the CIP does not receive the benefit of the parent application's earlier filing date.
  • 15.75.01: This section reiterates that the design in the CIP must be the same as the design in the parent application. It also refers to 35 U.S.C. 120's written description requirement, which explains when a CIP may benefit from the earlier filing date.

If the conditions outlined under 35 U.S.C. 120 are met, a design application may be considered a continuation of an earlier utility application and thus will benefit from the earlier filing date.

Though walking the line between changing a parent application and introducing new design information may be challenging, submitting a CIP application correctly can reduce costs associated with filing new applications. A patent attorney can help you decide whether a CIP would be beneficial and ensure that you execute it properly.

If you need help with design patent continuation, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.