
Suppose that you have an invention disclosure for a design of an article that you want to protect. When you review the invention disclosure, you notice that the design is ornamental, for example, a pattern, on an article such as a chair. You want to file a patent application to protect the design. Can you file a design patent application? The answer is YES.
For a design patent, 35 U.S.C. § 171 refers, not to the design of an article, but to the design for an article, and “is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980). The subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). Based on this, you draft a design patent application on the pattern described as applied to a chair. Can you file a design patent application as a provisional patent application? The answer is NO because the right of priority as to provisional patent applications provided for by 35 U.S.C. § 119 does not apply to designs. Therefore, you must file your design patent application as a regular examination design patent application. Continue Reading