By Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, July 11, 2017.of
On behalf of Haynes Beffel & Wolfeld LLP by James F. Hann
In our last post, we covered what a design patent is, as well as “the basics” on how to protect it. This week, we are focused on advanced design patent application strategies. In some cases, you have a preferred design but you
may want protection for one or more alternative designs. In other cases, you want to prevent your competitors from coming out with different but similar alternative designs. Depending on the importance of the product, separate design applications for each alternative design may not be cost-effective.
One option is to file an application with formal drawings for your preferred design and an appendix with figures for the alternative designs. The appendix could include one or more line drawings, digital images and photographs, sufficient to provide full disclosures for each of the alternative designs. The drawings in the appendix would provide support for filing continuation applications on the alternative designs. The drawings in the appendix can sometimes be used to support necessary amendments to the formal drawings of your original application.
Another option is to file a patent application with formal drawings for all of the designs. This will require preparing formal drawings for each of the designs, which may be expensive. This option usually requires that a preliminary amendment be filed canceling all of the figures except for what you consider to be the preferred design before the first office action; failure to do so can create significant problems.
In addition to covering variations on one product, the same strategies can be used for several products. For example, the application could be filed with drawings showing a vehicle exterior, a vehicle headlight, a vehicle windshield, vehicle wheels, etc.
While the application is pending, 1) a competitor introduces a competing product which is arguably covered by an alternative design, or 2) your current product is better protected by one of your alternative designs. In either case you can file a continuation application to cover the alternative design. The continuation application would include everything in the original application plus formal drawings for the alternative design. Before the continuation application issues, you can file a second continuation application, again with everything in the original application but with formal drawings for a second alternative design.