Design Patents Flashcards

Under what circumstances can a design patent application be converted to a utility patent application?

Answer: At any time before the patent issues, upon petition and payment of fees

An applicant may file a petition to convert a design application to a utility application under 37 C.F.R. § 1.53(c), provided the conversion is before the patent issues and appropriate fees are paid.

The 'point of novelty' test for design patent infringement was addressed by the Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc. (2008). What did the court hold?

Answer: The point of novelty test was eliminated; the ordinary observer test is the sole test

In Egyptian Goddess (2008), the Federal Circuit en banc eliminated the 'point of novelty' test and held that the ordinary observer test is the sole test for design patent infringement.

Which of the following constitutes prior art that can be used in an obviousness rejection against a design patent claim under 35 U.S.C. § 103?

Answer: Any prior art reference that teaches visual characteristics, regardless of the article it is applied to

In design patent obviousness analysis, visual characteristics from any prior art reference may be considered, not just references directed to the same article.

What must the claim language in a design patent application include according to 37 C.F.R. § 1.153?

Answer: The words 'The ornamental design for [article], as shown'

37 C.F.R. § 1.153 requires that a design patent claim state 'The ornamental design for [article], as shown' or 'as shown and described,' with the drawings serving as the disclosure.

Can a design patent application claim the benefit of an earlier-filed utility patent application under 35 U.S.C. § 120?

Answer: Yes, if the utility application discloses the same ornamental design

A design application may claim the benefit of an earlier-filed utility application under § 120 if the utility application discloses the ornamental design in sufficient detail.

In design patent prosecution, what is the significance of the 'article of manufacture' requirement?

Answer: The design must be applied to or embodied in a tangible, man-made object

The design must be for an article of manufacture — a tangible, human-made object — and a design existing only in the abstract or not applied to any article is unpatentable.

A design patent application claims the design of a shoe sole. A prior art reference shows an identical design applied to a plate. How should the examiner treat this reference in an anticipation analysis?

Answer: The reference can anticipate if the claimed design is identical to the design shown in the reference

For anticipation, the key comparison is whether the claimed ornamental design is identical to the design shown in the prior art reference, regardless of what article the design is applied to.