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Can a issued design patent stop me from getting a utility patent?

Los Angeles, CA |

I invented something that has utility purpose of its design in my field. I did a search on USPTO website and I found a design patent on it. Can a design patent stop me if I could prove that design of the product has a functional utility purpose in my field?

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Attorney answers 4

Posted

If the design patent constitutes prior art that would render your utility patent invalid on grounds of anticipation (lacking novelty) or obviousness, then it could prevent you from achieving a patent, This is true even if the design has a functional utility. In fact, if the design patent has been available to the public for more than a year and if the utilitarian functions are inherent in the design, the design patent would most certainly invalidate your patent because it would inherently disclose your invention even if the invention was not claimed. The owner of the design patent had no obligation to obtain a utility patent---and if the product that is covered by the design patent also has a utilitarian function, that design patent (and the product described which is also in the prior art) can prevent you from obtaining a patent on grounds of anticipation/novelty.

Posted

I think that it will depend on whether by looking at the design, a person skilled in the art would also understand a functional utility purpose. If the utility purpose is not apparent from the design, then that design patent would probably not stop you from getting a utility patent.

Maurice N Ross

Maurice N Ross

Posted

What about the doctrine of inherency. The Federal Circuit has repeatedly said that if the claimed invention is inherent in the prior art, it is invalid as anticipated even if the inherent property or characteristic is not disclosed or claimed by the patentee.

Ilya I. Libenzon

Ilya I. Libenzon

Posted

yes, Maurice, if it is not expressly but inherently disclosed then it can anticipate. My point was that to be inherently disclosed, it should follow from the drawings that the design has a functional property or characteristic -- I may be wrong, but I think that not any design inherently discloses all the functional characteristics

Maurice N Ross

Maurice N Ross

Posted

With respect, I think you are incorrect, but that has been a hot issue in recent federal circuit jurisprudence. This "asker" certainly needs to retain counsel to thoroughly review the law in this area. Thank you very much for your contribution to this web-site.

Ilya I. Libenzon

Ilya I. Libenzon

Posted

for example, if a design patent claims a diaper, how it could inherently disclose the materials, the sequence of layers, thickness of each layer, etc?

Maurice N Ross

Maurice N Ross

Posted

I believe in the area of pharmaceuticals the federal court has held that the diaper--if in the prior art, would inherently disclose its materials, sequence of layers, thickness of each layer etc. A drug composition has been held to inherently disclose its active ingredient, formulation ingredients, sequence of ingredients, percentages of ingredients in the formulation and inherent uses for the drug formulation. This is horn-book law in the pharmaceutical area.

Maurice N Ross

Maurice N Ross

Posted

I meant to say Federal Circuit. The main case is Schering v Geneva. Here is a link. http://law.justia.com/cases/federal/appellate-courts/F3/339/1373/603414/ The Court held that recognition of the inherent property is not required for anticipation. If it is there, it is there.

Ilya I. Libenzon

Ilya I. Libenzon

Posted

I don't think that this applies to design cases. I agree that the pharm composition would inherently have some physical and chemical properties; but how about design patent wherein it is not even clear what materials it's made of? If you claim a copper handle in a utility patent, then it would inherently be conductive because copper is conductive if you claim a handle in a design patent, how it could inherently disclose that it's conductive if you don't even know it's made of copper or plastic?

Maurice N Ross

Maurice N Ross

Posted

I am assuming the product, itself is on sale and in the prior art. If so, the inherent properties can be reversed engineered and are in the art. I don't really think this can reasonably be debated.

Ilya I. Libenzon

Ilya I. Libenzon

Posted

I guess you can assume that...

Bruce E. Burdick

Bruce E. Burdick

Posted

Interesting, but Maurice is right on this. Everything that mythical PHOSITRA would know from the design patent is disclosed even if not stated or shown. Proving such knowledge is obviously [a pun] more difficult for things not shown or stated. Remember this is a mythical PHOISTRA, so even actual knowledge is not needed, knowledge implied through inherency is sufficient for a mythical person. It's mythical but deadly.

Bruce E. Burdick

Bruce E. Burdick

Posted

As to the handle, remember under 37 CFR1.153(a) you don't claim "a handle" in a design patent you claim an ornamental design for a handle. , "37 CFR 1.153(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted." If you show a handle that looks like a cast iron frying pan handle you can be dead certain the design patent will be interpreted to inherently show a conductive handle. Remember, with no description, you cannot describe it as plastic unless you put that in your title, which you should not do since that limits the coverage.

Ilya I. Libenzon

Ilya I. Libenzon

Posted

I agree, everything that PHOSITA would know by looking at the design. My point is that PHOSITA would not know everything just by looking at the design as claimed, otherwise the examiner can reject pretty much everything under the inherentcy argument by finding a relevant design patent; my guess that inherent disclosure is limited only to whatever PHOSITA would know looking/considering the design.

Asker

Posted

Thank you all for the great discussion. I was thinking along what Mr. Libenzon was saying. I have not seen seen the product in the market or tv/internet, so I can't touch or feel the product. I had to go through countless hours of research to make it work for its purpose. When I got it to work, then I found out that somebody had a useless patent on the main part of my invention not the whole thing. I honestly feel that the patent is bogus in a way and design that is not . My invention is a combination of two different ideas (both are patented separately) and I created a useful product out of it. I don't trust Wikipedia but here is a quote from it "Design patents cover the ornamental nonfunctional design of an item. Design patents can be invalidated if the design has practical utility (e.g. the shape of a gear). Design patents are valid for 14 years from the date of issue. There are no maintenance fees." LINK- http://en.wikipedia.org/wiki/Design_patent Thank you guys, I really appreciate all the discussion inputs.

Posted

Design patents can be used as prior art against utility patents. There is no law or US PTO rule that prohibits a design patent from being used as prior art against a utility application. A design patent does not claim functionality, but that does not mean that functionality is not inherently disclosed or obvious in light of the design patent.

Disclaimer: This answer does not constitute legal advice and does not create an attorney-client relationship.

Asker

Posted

Thank you Mr. Shoiket. I really appreciate your input.

Ronald Christopher Peil

Ronald Christopher Peil

Posted

Examiners often attempt to reject claims on a theory that a reference "inherently" teaches the claimed subject matter. At least half the time, the finding of inherency can be shown to be improper because Examiners don't understand the standard for showing "inherent" anticipation. Such a rejection is usually based on the Examiner's position that the reference "could" include the claimed subject matter. However, a showing that the reference "could" include the claimed subject matter is insufficient to show that the reference "inherently" anticipates the claimed subject matter. The legal precedent requires a demonstration that the reference "must necessarily" include the claimed subject matter - a considerably higher bar to meet.

Posted

Yes. Design patents are frequently cited against patent claims in a utility patent. If the design patent is either identical to the claimed invention or makes the claimed invention obvious to a PHOSITRA (person having ordinary skill in the relevant art) the claimed invention is unpatentable under 35 USC 102/103. You might have a valid claim to an unknown and non-obvious use for the item in the design patent, but not to the shape or appearance disclosed in the design patent. You are struggling with basics of patent law and that tells me you for sure need to see a patent attorney so you can find out the answer for your specific situation.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

Asker

Posted

Thank you Mr. Burdick. First of all thank you for all the help. I really really appreciate it. I am a young kid that doesn't have the money to go to a lawyer at this point. I have a great product that has a huge potential (I mean huge) and with a lot of effort I have reduced it to practice. That is why I am trying to strap myself with as much information as possible, so I don't get burned by a big company. I really appreciate all your help.

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