Like many patent owners or aspiring patent owners, at some point you may have found yourself in a situation where design protection was needed, but all you had was narrow utility protection. Perhaps a decision had been made years ago to forgo a design filing in favor of a utility application, and in retrospect, that decision was a costly mistake. Sure, your disclosure may have been robust and your drawings comprehensive, but the available claim scope is not as broad as you would like, and now a competitor is selling a product that looks a lot like your product but does not infringe any of your utility claims.
Fortunately, all may not be lost. If any utility patent application within your patent family is still active and pending at the USPTO (i.e., if there is a pending continuation application), design protection may still be a possibility. As the ancient Romans would say when faced with similar challenges: Dum Spiro Spero.
Under 35 U.S.C. § 172, a design application may claim the benefit of the filing date of a previously filed non-provisional utility application. That is, where there is an active continuation or divisional application with a claim under 35 U.S.C. § 120 or § 121 to the earliest priority filing date—and assuming that the original utility filing sufficiently disclosed the design that you now want to claim—an applicant can have a second “bite” at the proverbial apple of design protection by filing a design application that claims priority to the utility application.
As with any patent protection, design or otherwise, when filing a design application claiming priority to a utility application, an applicant should be careful to avoid adding new matter. Where a design patent application is filed with a claim to a parent utility application, the drawings of the design should be taken directly from the utility filing to preserve the priority date of the parent application.
One lesson to be drawn from such a filing strategy is that utility applications should be prepared with potential design applications in mind, especially if an applicant initially decides to forgo standalone design patent protection. That is, if there is any possibility of needing design protection in the future, the drawings of a utility application should be prepared in order to support a subsequent design filing. This can involve, for example, providing multiple views of the product disclosed in the application that may otherwise be unnecessary for the utility application to ensure the broadest possible support should circumstances necessitate a change in strategy.
Another takeaway is that an active continuation application is a powerful tool in a changing business landscape. Maintaining an active patent family by filing continuations can provide an applicant with the flexibility to tailor protection in an evolving competitive landscape, especially while a patent disclosure continues to protect an on-the-shelf product.
The Quarles design rights legal team is nationally recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page. To subscribe to our mailing list and receive updates that highlight issues currently affect the design rights legal field, click here.