Definition of a Design

A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.

In discharging its patent-related duties, the United States Patent and Trademark Office (USPTO or Office) examines applications and grants patents on inventions when applicants are entitled to them. The patent law provides for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features. The principal statutes (United States Code) governing design patents are:

The practice and procedures relating to design applications are set forth in chapter 1500 of the Manual of Patent Examining Procedure (MPEP). Inquiries relating to the sale of the MPEP should be directed to the Superintendent of Documents, United States Government Printing Office, Washington, D.C. 20402. Telephone: 202.512.1800.

The Difference Between Design and Utility Patents

In general terms, a "utility patent" protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics. Drawings or Black and White Photographs

The drawing disclosure is the most important element of the application. Every design patent application must include either a drawing or a black and white photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, that nothing regarding the design sought to be patented is left to conjecture. The design drawing or photograph must comply with the disclosure requirements of 35 U.S.C. 112, first paragraph. To meet the requirements of 35 U.S.C. 112, the drawings or photographs must include a sufficient number of views to constitute a complete disclosure of the appearance of the design claimed. Drawings are normally required to be in black ink on white paper. Black and white photographs, in lieu of drawings, are permitted subject to the requirements of 37 CFR §1.84(b)(1) and §1.152. Applicant should refer to these rules, included at the end of this guide. These rules set forth in detail the requirements for proper drawings in a design patent application. Black and white photographs submitted on double weight photographic paper must have the drawing figure number entered on the face of the photograph. Photographs mounted on Bristol board may have the figure number shown in black ink on the Bristol board, proximate the corresponding photograph.

Black and white photographs and ink drawings must not be combined in a formal submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and ink drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the ink drawings as compared with the photographs. Photographs submitted in lieu of ink drawings must not disclose environmental structure but must be limited to the claimed design itself. Color Drawings or Color Photographs

The Office will accept color drawings or photographs in design patent applications only after the granting of a petition filed under 37 CFR §1.84(a)(2), explaining why the color drawings or photographs are necessary. Any such petition must include the fee set forth in 37 CFR § 1.17(h), three sets of color drawings or photographs, and the specification must contain the following language before the description of the drawings:

"The patent or application file contains a least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee."

If color photographs are submitted as informal drawings and the applicant does not consider the color to be part of the claimed design, a disclaimer should be added to the specification as follows: "The color shown on the claimed design forms no part thereof." Color will be considered an integral part of the disclosed and claimed design in the absence of a disclaimer filed with the original application. A disclaimer may only be used when filing color photographs as informal drawings, as 37 CFR §1.152 requires that the disclosure in formal photographs be limited to the design for the article claimed.

The Views

The drawings or photographs should contain a sufficient number of views to completely disclose the appearance of the claimed design, i.e., front, rear, right and left sides, top and bottom. While not required, it is suggested that perspective views be submitted to clearly show the appearance and shape of three-dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective.

Views that are merely duplicates of other views of the design or that are merely flat and include no ornamentality may be omitted from the drawing if the specification makes this explicitly clear. For example, if the left and right sides of a design are identical or a mirror image, a view should be provided of one side and a statement made in the drawing description that the other side is identical or a mirror image. If the bottom of the design is flat, a view of the bottom may be omitted if the figure descriptions include a statement that the bottom is flat and unornamented. The term "unornamented" should not be used to describe visible surfaces that include structure that is clearly not flat. In some cases, the claim may be directed to an entire article, but because all sides of the article may not be visible during normal use, it is not necessary to disclose them. A sectional view which more clearly brings out elements of the design is permissible, however a sectional view presented to show functional features, or interior structure not forming part of the claimed design, is neither required nor permitted.

Surface Shading

The drawing should be provided with appropriate surface shading which shows clearly the character and contour of all surfaces of any three-dimensional aspects of the design. Surface shading is also necessary to distinguish between any open and solid areas of the design. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Lack of appropriate surface shading in the drawing as filed may render the shape and contour of the design nonenabling under 35 U.S.C. 112, first paragraph. Additionally, if the shape of the design is not evident from the disclosure as filed, addition of surface shading after filing may be viewed as new matter. New matter is anything that is added to, or from, the claim, drawings or specification, that was neither shown nor suggested in the original application (see 35 U.S.C. 132 and 37 CFR § 1.121, at the end of this guide).

Broken Lines

A broken line disclosure is understood to be for illustrative purposes only and forms no part of the claimed design. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is used, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied or applied to that is not considered part of the claimed design. When the claim is directed to just surface ornamentation for an article, the article in which it is embodied must be shown in broken lines.

In general, when broken lines are used, they should not intrude upon or cross the showing of the claimed design and should not be of heavier weight than the lines used in depicting the claimed design. Where a broken line showing of environmental structure must necessarily cross or intrude upon the representation of the claimed design and obscures a clear understanding of the design, such an illustration should be included as a separate figure in addition to the other figures which fully disclose the subject matter of the design.