How Do Design Patent Applications Differ in Terms of Foreign Priority, Novelty, and Other Timing Issues?

This post covers a very specialized subject and I am writing it 90% as a reference for myself, but hopefully some other practitioners out there will get some use out of it if nothing else.

What is a Design Patent?

The appearance (“ornamental design”) of useful articles (like cabinets, cars, shoes, etc.) that are not purely creative works but have some function cannot be protected by copyright.  Instead, they are protected by design patents.  Design patents give you the right to exclude others from making, using, copying, or importing objects with designs substantially similar to yours in the United States for a period of 14 years from the date of issue.

Differences Between Design Patents and Utility Patents

Design patents are controlled by the same rules as those for utility patents, with a few exceptions (detailed in MPEP § 1500).  One of the ways design patents differ from the much more common utility patents is in matters of timing.  Other than the aforementioned 14 year term, design patents also differ with regard to foreign priority claims and rejections for lack of novelty under § 102(d).

Foreign Priority of Design Patents

As stated in statute 35 U.S.C. § 172, “The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs.” Section 119 states that a U.S. application previously filed in a foreign country is entitled to the filing date of the foreign application if the requirements therefor are met, and if filed within 12 months of the filing date of the original foreign application.

Therefore, as explained in MPEP § 1504.10, a U.S. design application must be filed within 6 months, not 12 months as for a utility application, in order to get the benefit of the early filing date of the foreign application. If a foreign design registration was filed April 12, 2009, a U.S. design patent application claiming the benefit of that application filed by October 12, 2009 will be treated by the Patent Office as if it was filed on the April 12, 2009 filing date of the foreign application. If that same U.S. design application is filed October 13, 2009, it will not get the benefit of the earlier filing date.

Design Patents and Novelty Rejections Under § 102(d)

35 U.S.C. § 102(d) sets forth a basis for rejection of an application due to the earlier filing of the same application in another country. For a utility application, if the foreign filed application issues as a patent before the U.S. application is filed and the foreign application was filed more than 12 months before, no U.S. patent can be granted.

In the case of design patents, as dictated by 35 U.S.C. § 172, this time period is only 6 months.  This is particularly important because in many European countries, design registrations are granted immediately.  Therefore, if the foreign application is filed first, it will always issue before the U.S. application is filed.  In that case, any U.S. design application, whether claiming priority to the foreign application or not, is completely barred after only 6 months.

Design Patents and Other Novelty Provisions, Including § 102(b)

The other novelty provisions are unchanged.  35 U.S.C. § 102(b), for example, sets forth the one-year absolute bar for patentability.  Any issued patent or publication disclosing an invention, anywhere in the world, or any sale or public use of the invention in the U.S., more than one year before a U.S. application is filed for the invention, renders the invention unpatentable in the U.S.  That holds even if the inventor can prove that he or she completed the invention before the patent, publication, sale, or public use.

That bar is unchanged for design patents.  Design patents are governed by the same rules as utility patents except where specifically noted.  Nothing in the patent rules, including chapter 1500 of the MPEP, says anything about the other novelty rules changing for a design patent.  Therefore, those rules are the same for utility and design patents.

Any questions about design patents or about their differences in timing?  Please leave them in the comments.