Prosecution of Design Patents : As per the US patent law, the design patents replace the “usefulness” requirement of utility patents with an “ornamentality” requirement. For a design to be considered patentable, it must include some primarily nonfunctional feature or characteristic.
Prosecution of Design Patents
The scope of the prior art that may affect the novelty or non-obviousness of a design patent is much broader than that for utility patents. In utility patents, the scope of the search extends to cover those documents that reflect the essential function or utility of the invention. However, in design cases, the definition of prior-art is much broader than for utility applications. In the design cases, the definition of prior-art encompasses any art that has similar ornamental features. That is, in a design patent, any article with a substantially similar appearance to that of the claimed design is prior art, regardless of the use or function of the article.
Like in the utility patents where the patent office considers a “person of ordinary skill in the art” as a benchmark to consider the cited prior-art references, for the design patents the consideration is done from the viewpoint of an ordinary observer. That is, the tests for determining the novelty or obviousness for the design patent requires comparison of two designs from the viewpoint of the ordinary observer to determine whether a patented design as a whole is substantially the same as the design as presented by the cited prior-art documents alone or in combination. The ordinary observer, as used herein, may be a skilled artisan who is involved in manufacturing of similar articles as the design in question.
During prosecution, to find anticipation of a design patent, the same design must be found in a single piece of prior art, from the viewpoint of the ordinary observer. And similarly, to find obviousness of a design patent, the claimed design must be obvious by combination of pieces of prior art, from the viewpoint of the ordinary observer. These aspects will be discussed in more detail in a later article.