By definition, design patents protect ornamental designs. The standard for determining whether a design or design feature is ornamental—and what effect that determination has—remains unsettled. Unlike utility patents, design patent applications are not published when the applicant files directly with the USPTO. Further, the application’s prosecution history is not publicly available until the application issues unless it is a divisional or continuation application. Consequently, less information is available about design patent applications until the applications issue.
Counsel must find the proper balance when claiming designs. Applicants will often use portion claiming techniques, which helps protect the innovative portions of a design while making it more difficult to “design around” the patent. However, it may also make it harder to get the patent because it is more susceptible to the prior art.
In light of recent design patent decisions, including the Federal Circuit’s decision in Sport Dimension (2016), counsel should consider filing applications with multiple embodiments or filing multiple applications for a design concept with different degrees of scope.
The panel will review these and other key questions:
- What key considerations should counsel keep in mind in design patent drafting?
- What steps should counsel to patent owners take to factor out functional aspects during claim construction?
- What guidance can be drawn from recent court decisions for design patent claim construction?