Patent Bar Exam Design Patents 4 — Questions and Answers
Question 1: Under what circumstances can a design patent application be converted to a utility patent application?
- At any time before examination begins
- At any time before the patent issues, upon petition and payment of fees (Correct answer)
- Only before the first Office Action
- Design applications cannot be converted to utility applications
Correct 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.
Question 2: 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?
- The point of novelty test was adopted as the sole test for infringement
- The point of novelty test was eliminated; the ordinary observer test is the sole test (Correct answer)
- Both the ordinary observer test and point of novelty test must be satisfied
- The point of novelty test applies only to functional designs
Correct 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.
Question 3: 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?
- Only patents directed to the same article of manufacture
- Any prior art reference that teaches visual characteristics, regardless of the article it is applied to (Correct answer)
- Only prior art within 2 years before the filing date
- Only utility patents showing the same general shape
Correct 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.
Question 4: What must the claim language in a design patent application include according to 37 C.F.R. § 1.153?
- A detailed written description of every visual feature
- The words 'The ornamental design for [article], as shown' (Correct answer)
- A list of distinguishing design features over the prior art
- Multiple dependent claims describing alternative embodiments
Correct 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.
Question 5: Can a design patent application claim the benefit of an earlier-filed utility patent application under 35 U.S.C. § 120?
- Yes, if the utility application discloses the same ornamental design (Correct answer)
- No, design applications cannot claim domestic priority to utility applications
- Yes, but only if the utility application was filed within 6 months
- No, only utility applications can claim priority under § 120
Correct 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.
Question 6: In design patent prosecution, what is the significance of the 'article of manufacture' requirement?
- The article must be mass-produced to qualify
- The design must be applied to or embodied in a tangible, man-made object (Correct answer)
- The article must be sold commercially before a patent can issue
- The article must be a consumer product, not industrial equipment
Correct 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.
Question 7: 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?
- The reference cannot anticipate because it is applied to a different article
- The reference can anticipate if the claimed design is identical to the design shown in the reference (Correct answer)
- The reference can only be used as a secondary reference in an obviousness rejection
- The reference cannot be used because it is in a different field of art
Correct 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.
Patent Bar Exam Design Patents 4
Under what circumstances can a design patent application be converted to a utility patent application?