The days of treating design patent applications as unsophisticated and easily drafted alternatives to utility applications may be at an end. More and more patent practitioners are recognizing the power of design patent applications and particularly how mastering advanced design patent techniques can provide broader protection. If you have any reservations about using such advanced techniques, let us assure you that design patent giants the likes of Apple and Google have been doing it for years and with great success. We outline a number of advanced techniques using granted patents from these heavy weights.
File continuation applications
Claiming one or more portions or features of a design in one or more subsequent continuation applications can both broaden and strengthen protection. Instead of filing only one design patent application covering the entire design, advanced applicants will file a series of design application by first filing a more narrow application covering the entire design. The first application, when granted, spawns a brood of continuation applications that claim one or more portions of the overall design, each subsequent application claiming a different portion of the design.
It has been held that the determination of patentability is based on the design for the article as shown and described. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). The appearance of any part of the article not shown in the drawing or described in the specification forms no part of the claimed design. Applicants typically use dashed, dotted or any type of broken lines to indicate unclaimed subject matter, including a notation in the description that the broken lines illustrate features that form no part of the claimed design.
One great example of this technique is the docking station and keyboard in the series of patents to Apple, Inc: US Patent US D648725 and US D669477.
As you can see, in the US Patent D648725, the applicant claimed the docking station and the keyboard (solid lines), while in the subsequently filed US Patent D669477, the entire docking station appears unclaimed (dashed lined) and only the outlines of the keyboard and the connector are claimed (solid lines). See also US Patent D659143 S1.
As highlighted by Dennis Crouch at Patenly-O, this technique has both offensive and defensive benefits, including (1) protection from competitors who copy only a portion of the product; and (2) protection for the patentee’s product design which can still be covered by the design patent even after small changes to the design.
Claim features not immediately separable
One example of this technique is shown in US Patent D599742 for a connector strain relief. As it appears, the features of the connector claimed (solid lines) include the opening in the connector, and a portion of the body of the connector. The remaining portion of the body and the connector itself are unclaimed (dashed). However, the applicant should be cautious in creatively claiming these features, in light of the most recent Federal Circuit decision In re Owens, where the Federal Circuit held that if a designer of skill in the art would not reasonably have foreseen the subject matter claimed by a continuation application, the claims may not be supported by the written description of the parent.
Including multiple embodiments in one application
It is also possible to include more than one embodiment into a single application, with each embodiment claiming a different combination of features of the design. For example, US Patent D613735 S1 in figures 1-9 claims the device having the familiar rectangular shape, the circular button in the middle, and includes surface shading, while figures 10-18 claim the same rectangular shape without claiming the circular button in the middle, and does not include surface shading.
The applicant may receive a restriction requirement from the USPTO if the embodiments in the single application are too distinct.
Stay tuned for next week’s edition of advanced design patent drafting techniques when we’ll talk about the use of the written description, claiming articles of indeterminable length and use of surface shading.