Design Patent Continuation

A design patent continuation, which is also known as a continuation-in-part (CIP), has the following characteristics:

  • It repeats some of the content in the parent application.
  • It discloses new material in the parent application.
  • It is examined just like any other type of nonprovisional application.
  • It can 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 a completely new application and paying additional fees.

Design Patents Vs. 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. 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 the help of an attorney, but filing a design patent application as a CIP of an existing application, if possible, 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 into 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 will thus 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.

Continuation-in-Part Design Patent Applications

It is not considered a change in the configuration of the patent or design when the lines of a drawing are converted to broken lines and broken lines are converted to solid ones. This departure would not be enough to be considered new matter.

In the federal court case of Owens, the court ruled that future applications regarding unclaimed boundary lines "should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.”

A properly timed continuation-in-part application can be used as a business description in an attempt to:

  • Decrease the short-term costs
  • Ensure flexibility in the claim subject matter

In some cases, it is beneficial to file a CIP application before the official publication of the patent, to lower the risk of the application being considered prior art.

New Guidance With the Owens Decision

In the Owens case, the Court of Appeals upheld in favor of the USPTO's right to reject a CIP application. This provided guidance on the practice of claiming a previously claimed design in tandem with seeking a priority date for filing. The case began with inventor Timothy Owens, who filed for a patent on the design of a bottle. He then filed a continuation design patent claiming a portion of the bottle design.

After the USPTO rejected the continuation design patent application, Owens appealed the decision. The rejection occurred because the continuation application attempted to claim the benefit of priority to a parent application. Owens countered that without the benefit of priority, the new application would be barred by prior sales.

The continuation application had sought to claim design elements that were on the top and side of the bottle design that the original patent had claimed. To differentiate which section was used for the continuation patent, Owens had used a broken line to bisect the top section.

The examiner rejected this, saying that that the new surface was entirely new and constituted new matter. They also claimed that there was no evidence of that structure in the original patent application.

Owens claimed that he was only creating a new boundary and that the wrong description was applied to the case. In agreeing with the rejection, the court stated in its opinion that the granting of a patent on a previously claimed design does not proceed to subdivide the previously claimed design into subsequent continuation applications when the applicant pleases.

Because of the Owens ruling, inventors or designers should include and identify which portion of the design should be initially claimed, as well as portions of the design that may be claimed later in a continuing patent on the initial patent form.

Not providing the proper support initially may prevent later modification to the design claim by adding a line in the drawing that was previously unidentified. It is also good practice to make sure that the initial application will provide for meaningful protection of the design through the patent. Making this identification will remove the need to claim unsupported boundary lines in a continuing design patent application.

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.