Patent Bar Exam Design Patents 4

Question 1

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

Accepted Answer

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

Answer

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?

Accepted Answer

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

Answer

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?

Accepted Answer

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

Answer

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?

Accepted Answer

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

Answer

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?

Accepted Answer

Yes, if the utility application discloses the same ornamental design

Answer

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.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Design Patents 4