Prosecuting Design Patent Application

Prosecution of design patent application is not that different from prosecuting a normal utility patent application or the like. Preparing a design patent application, and further prosecution of the same, requires the knowledge of local patent law and rules, and familiarity with the practice and procedures of the designated patent office.

For properly prosecuting a design patent application, first it must be established that the concerned application meets the pre-requisite requirements. In a design patent application, the most important part is the drawing disclosure. The drawing disclosure, as a part of the design patent application, illustrates the design being claimed. A proper design patent application should include a set of drawings in compliance with the given rules and standards. In a design patent application, the claim protects the overall visual appearance of the design, as illustrated in the drawings. This differs from a utility patent application, in which the claim tries to describe the invention or the idea behind the invention in a broadest possible manner.

The examination process during the prosecution of a design patent application includes checking for completeness of the drawing disclosure and a comparison of the design features with other designs in the same class from the available prior-art. Like during prosecution of a utility patent application, prior-art consists of issued patents and published materials. If the claimed subject matter is found to be patentable, the application will be allowed, and instructions will be provided to applicant for completing the process to get the patent granted.

Oftentimes, the design patent application may be rejected if a reference alone or in combination with other references, shows the claimed design to be unpatentable. It is also possible that the examiner may reject the design patent application if the disclosure cannot be understood or is incomplete. The examiner generally issues an office action report detailing the rejections. This office action may also contain suggestions by the examiner for amendments to the application. The applicant may file a response against the office action countering examiner’s arguments to deny the design patent.

We will discuss about requirements for drafting a response to an office action issued against the design patent application.

If, after receiving an office action, the applicant wishes to pursue for the grant of the design patent then he/she would have to continue prosecution of the application. For this purpose, the applicant needs to file a timely response to the office action as issued by the patent office. Generally, the response to an office action includes the applicant’s arguments for reconsideration or further examination of the application. The applicant may also include any amendments in the repose which may help to overcome the rejections raised by the examiner.

In any communication with the Office, applicant should include the following items:

  1. Application number (checked for accuracy).
  2. Group art unit number (copied from filing receipt or the most recent Office action).
  3. Filing date.
  4. Name of the examiner who prepared the most recent Office action.
  5. Title of invention.

In the office action response, the applicant (or his/her legal representative) shall try to specifically point out the possible errors in consideration of the prior-art against the claims of the present design application. The office action response shall try to address each and every objection and/or rejection raised in the office action report. If the examiner has rejected the claim over prior art, a general statement by the applicant that the claim is patentable, without specifically pointing out how the design is patentable over the prior art, may not be enough. The applicant has to clearly and specifically point out the differences for the perusal of the examiner.

It shall be noted that in the response of a drawing application’s office action, changes to drawings are permitted as long as it does not extend the scope of the application. That is, the changes as made to the previously submitted drawings after the application has been filed may not introduce any new matter, as per the law (35 U.S.C. 132).

We will discuss about some formalities and guidelines for preparing a response to an office action received from the patent office, issued for the design patent application.

Subsequent to receiving an office action, the applicant is required to submit a response to the Patent Office in order to avoid abandoning of the patent application. It shall be noted that it is on the applicant to make sure that the response to the office action is received by the concerned patent office in written form, before the designated time period as set out in the office action by the examiner (usually, three (3) months for US patent applications) is expired. In case the patent office does not receive the proper response within the designated time period, the application will be considered abandoned.

In the event that the response to the office action is delayed because of some reasons, the applicant, in some cases, may be able to prevent abandonment of the application; if a petition for extension of time and requisite fee are filed along with the response is filed within six months from the original date of the issued office action. To be cautious, a “Certificate of Mailing” should be attached to the office action response in order to establish the date of the mailing of the response and thereby prevent the missing of the time period set for reply to the office action. In other words, this “Certificate” establishes that the reply has been mailed on a given date and any delay caused from postal service shall not be considered the reason for abandonment of the application.

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