Patent Bar Exam Design Patents 3 — Questions and Answers
Question 1: In design patent prosecution, the 'ordinary observer' test for infringement was established in which landmark Supreme Court case?
- KSR International Co. v. Teleflex Inc.
- Gorham Co. v. White (Correct answer)
- Egyptian Goddess, Inc. v. Swisa, Inc.
- Apple Inc. v. Samsung Electronics Co.
Correct answer: Gorham Co. v. White
Gorham Co. v. White (1871) established the 'ordinary observer' test: an ordinary observer giving attention to the designs would be deceived into thinking one is the other.
Question 2: A design patent application is filed without any drawings. What is the result?
- The application receives a filing date but is immediately abandoned
- The application is not entitled to a filing date (Correct answer)
- The examiner will request drawings within 60 days
- The application is treated as a utility patent application
Correct answer: The application is not entitled to a filing date
Under 37 C.F.R. § 1.154, a design application must include drawings, and without them the application cannot receive a filing date.
Question 3: What is the primary difference between a design patent and a utility patent regarding the scope of protection?
- Design patents protect functional aspects; utility patents protect ornamental aspects
- Design patents protect the ornamental appearance; utility patents protect functional aspects (Correct answer)
- Design patents require broader claims; utility patents require narrow claims
- Design patents last longer than utility patents
Correct answer: Design patents protect the ornamental appearance; utility patents protect functional aspects
Design patents protect only the novel ornamental appearance of an article, while utility patents protect how an article works or is used.
Question 4: Under 37 C.F.R. § 1.153, how many claims are permitted in a design patent application?
- Up to three independent claims
- Only one claim (Correct answer)
- Unlimited, as long as they cover distinct aspects
- Up to twenty claims total
Correct answer: Only one claim
37 C.F.R. § 1.153 requires that a design application include only one claim, which must be in a specific format referring to the drawings.
Question 5: A design patent applicant wishes to claim priority to an earlier-filed foreign design application under the Paris Convention. What is the priority period for design applications?
- 12 months from the foreign filing date
- 6 months from the foreign filing date (Correct answer)
- 18 months from the foreign filing date
- 30 months from the foreign filing date
Correct answer: 6 months from the foreign filing date
Under 35 U.S.C. § 172, the priority period for design patent applications is 6 months from the date of filing the foreign application, not the 12 months applicable to utility patents.
Question 6: Which of the following best describes the 'Rosen reference' in the context of design patent obviousness analysis?
- A reference that anticipates the claimed design
- A primary reference whose overall appearance is basically the same as the claimed design (Correct answer)
- A secondary reference used to modify the primary reference
- A reference that shows the functional aspects of the design
Correct answer: A primary reference whose overall appearance is basically the same as the claimed design
A Rosen reference is a primary prior art reference whose overall visual impression is basically the same as the claimed design, serving as the starting point for a § 103 rejection.
Question 7: A design patent drawing shows a chair design in phantom (broken) lines for the chair's seat, while the back and legs are in solid lines. What is claimed?
- The entire chair including the seat
- Only the back and legs of the chair (Correct answer)
- The relationship between the seat, back, and legs
- The chair as an article of manufacture
Correct answer: Only the back and legs of the chair
Only the portions shown in solid lines form part of the claimed design; the seat shown in broken/phantom lines is excluded from the claim scope.
Patent Bar Exam Design Patents 3
In design patent prosecution, the 'ordinary observer' test for infringement was established in which landmark Supreme Court case?