The drawings for a design patent application is the most important part of the design patent application. The drawings define the scope of protection afforded under the design patent. The drawings for the design patent application are not designed to tell a story as in the drawings for a utility patent application. Rather, because a design patent protects the ornamentation of a product, it is primarily concerned with showing the protected design of the product. Simply put, the drawings should show the look of the product it is protecting.
Keep the End Goal in Mind when Preparing Drawings for a Design Patent Application
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Show the unique design
The end goal for the drawings of a design patent application is to show the unique design of the product.
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Focus only on the unique portion
The focus of the drawings should be only on the unique portion of the design. If the overall design of the product is unique, then the drawings should show the overall design of the product. If more of the product is shown than the unique portion, then doing so will unduly narrows the scope of protection granted by the design patent.
In general terms, if a bicycle wheel had a unique design and the bicycle manufacturer wanted to seek a design patent on the bicycle wheel, then to add the frame, handlebars, brakes, etc. which are not related to the uniqueness of the bicycle wheel limits the scope of protection given to the design patent.
For a competitor to infringe on a bicycle wheel design patent that also shows the other components of the bicycle, the competitor would have to copy the design of the bicycle which is peripheral to the unique bicycle wheel. In contrast, if only the bicycle wheel is shown, and thus claimed in the design patent, then as long as the competitor’s bicycle wheel copies the unique design elements of the patented bicycle wheel, then the competitor is liable for design patent infringement liability.
When do you prepare the drawings for the design patent application?
As indicated above, the drawings for the design patent application must represent the unique portion of what one wants to protect. In this sense, the drawings for the design patent application should be prepared after you are settled on the design. The drawings for the design patent application should not be prepared early in the product development cycle. The reason is that the design might change at any time before product launch. If so, the drawings might not be useful for filing of the application.
In general, the drawings should be prepared as close to the product launch as possible. It could be filed earlier such as after machining the plastic injection molds or some other financial investment that locks the design in place. Why? Because after the molds are made, it would be financially difficult to justify a change in the design. It also probably means that the management has settled on the design and there will probably be no more changes.
Patent Rules
Patent applicant’s must comply with the Code of Federal Regulations (C.F.R.). They are referred to as the “rules.”
Rule 152 (37 C.F.R. 152) states: “The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design.”
Patent Guidance
From the rules, the United States Patent and Trademark Office (USPTO) produces guides to implement the rules. To this end, the USPTO has published a Design Patent Application Guide (“Guide”). The Guide discusses all aspects of drawings for design patent applications. For example, the Guide explains “The Views” to be shown in the drawings and use of “Broken Lines. These are important aspects of the drawings among other things.
In practice, the common views that are shown in a design patent application is one perspective view of the product. The product can be placed in its environment but the environment should be placed in broken lines. By environment, we mean the context of the unique design. In the bicycle wheel example above, the bicycle frame, handle bars, etc. would be considered the environment of the unique bicycle wheel.
Broken lines represent the environment and do not show or reflect any part of the design or ornamentation to be protected. Solid lines on the other hand show features of the unique design and define the ornamentation or design to be protected.
Along with the perspective view, six other views are commonly shown, namely, the front view, the rear view, the top view, the bottom view, the left view and the right view.
More views than those described above may be needed. Simply put, there must be a sufficient number of views to show all of the surfaces to be protected by the design patent.
You can also find out more information about design patents in Chapter 1500 of the Manual of Patent Examining Procedure.
The Guide and the MPEP will be the best resources for anyone interested in the mechanics of preparing drawings for a design patent application and drafting the text portion of the design patent application.
Hire a Patent Attorney, Patent Drafter, or Do It Yourself
The USPTO provides great resources for those that might want to learn how to prepare and file a design patent application. However, in my humble opinion, those resources are insufficient to learn how to protect the design. Oftentimes, the design patent appears simple and it really is simple to prepare but because of certain nuances, it is quite tricky to secure broad design patent protection unless you hire an experienced patent attorney.
In my experience, bypassing the patent attorney and going direct to a patent drafter will not be useful to the do-it-yourself inventor. The reason is that the patent drafters cannot provide advice on what to protect and how to protect it. The do-it-yourself inventor must give the drafter instructions on which views to show and which portion of the product is to be in solid lines and which sections are to be shown in hidden lines.
Tip when filing corresponding utility and design patent applications
Sometimes corresponding utility and design patent applications are filed on the same product. Design patents protect the ornamentation, whereas, the utility patent protects the functional features of a product. In this regard, the design and utility patents protect different things. Hence, both can be filed to protect a product.
One of the issues with filing both a utility and design patent application on the same product is that it is tempting to utilize the same drawings for both the utility and design patent applications to save on drawing costs. However, it may be prudent to incur additional costs so that the utility drawings are not the same as the design drawings, and vice versa. The design drawings cannot protect functional features. As such, if the utility drawings are used in the design drawings, then there may be an implicit admission that the drawings of the design patent application are functional in nature and may limit the protection in the design patent because design patents cannot protect functional features. Conversely, the use of the design drawings in the utility patent may be an admission that the features shown in the utility patent are ornamentation and not really functional in nature, and thus limiting the scope of protection of the utility patent.
I invite you to contact me with your patent questions (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.