Patent Bar Exam Design Patents 5 — Questions and Answers
Question 1: Under the Hague Agreement Concerning the International Registration of Industrial Designs, which USPTO fee must be paid when filing an international design application designating the United States?
- Only the international filing fee to WIPO
- The U.S. designation fee and, upon entering national phase, the basic national fee (Correct answer)
- No fees are required until examination begins
- The same fees as a domestic design application filed directly with the USPTO
Correct answer: The U.S. designation fee and, upon entering national phase, the basic national fee
When designating the U.S. in a Hague Agreement application, the applicant must pay the U.S. designation fee to WIPO plus applicable USPTO fees when the application enters the national phase.
Question 2: What is the standard of review applied by a court when evaluating the obviousness of a design patent claim after KSR International Co. v. Teleflex Inc. (2007)?
- A rigid, three-step test requiring explicit teaching, suggestion, or motivation
- A flexible, expansive analysis considering all available knowledge and design incentives (Correct answer)
- Only the visual similarity between the claimed design and prior art
- Exclusively the commercial success of the design product
Correct answer: A flexible, expansive analysis considering all available knowledge and design incentives
After KSR, courts apply a flexible obviousness analysis that considers whether a designer of ordinary skill would have been motivated to combine prior art references, rejecting a rigid TSM test.
Question 3: A design patent application's drawings show six views of a product (front, back, left, right, top, bottom). The applicant wants to cancel the back view and replace it with a perspective view. How should the applicant proceed?
- File a continuation application with corrected drawings
- Submit a petition to cancel the view and add the perspective view with a showing that no new matter is introduced
- File an amendment to the drawings with a showing that the replacement introduces no new matter (Correct answer)
- Request a pre-examination interview with the examiner
Correct answer: File an amendment to the drawings with a showing that the replacement introduces no new matter
Amendments to design drawings are permissible provided the replacement does not introduce new matter; the applicant submits the amendment along with a statement that no new matter is added.
Question 4: Which of the following types of computer-generated icons are eligible for design patent protection?
- Any icon that can be displayed on a screen, regardless of the underlying article
- Icons shown on a computer screen or other display as part of an article of manufacture (Correct answer)
- Only icons that are permanently embedded in hardware
- Icons that serve purely functional purposes on a website
Correct answer: Icons shown on a computer screen or other display as part of an article of manufacture
Computer-generated icons displayed on a screen are patentable as designs for an article of manufacture (the screen/computer), provided they are ornamental and shown in the drawings as part of the article.
Question 5: A design patent holder discovers that a competitor's product infringes the design patent. In assessing damages under 35 U.S.C. § 289, what remedy is available specifically for design patent infringement?
- Reasonable royalty damages only
- The infringer's total profit from the sale of the article bearing the infringing design (Correct answer)
- Lost profits of the design patent holder
- Statutory damages of $150,000 per infringement
Correct answer: The infringer's total profit from the sale of the article bearing the infringing design
35 U.S.C. § 289 provides design patent holders with a unique remedy: recovery of the infringer's total profit from the sale of any article to which the patented design is applied.
Question 6: Which of the following best describes the 'scope of the article' as relevant to design patent claim interpretation under MPEP § 1504.01?
- The article must be the most common version sold on the market
- The article identifies what the design is applied to and limits the scope of protection (Correct answer)
- The article must be identified by its trademark name
- The article is irrelevant to claim scope; only the visual design matters
Correct answer: The article identifies what the design is applied to and limits the scope of protection
The identified article of manufacture defines what the design is applied to and helps determine the scope of protection, as identical designs applied to different articles may receive different treatment.
Question 7: Under 35 U.S.C. § 173 and pre-AIA law, a design patent filed before May 13, 2015 has a term of how many years from the grant date?
- 17 years
- 20 years
- 14 years (Correct answer)
- 15 years
Correct answer: 14 years
Design patents filed before May 13, 2015 have a 14-year term from the date of grant, as opposed to the 15-year term for design patents filed after that date.
Patent Bar Exam Design Patents 5
Under the Hague Agreement Concerning the International Registration of Industrial Designs, which USPTO fee must be paid when filing an international design application designating the United States?