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 its structural or utilitarian features. The principal statutes (United States Code) governing design patents are:

35 U.S.C. 171

35 U.S.C. 173

35 U.S.C. 102

35 U.S.C. 103

35 U.S.C. 112

35 U.S.C. 132

The rules (Code of Federal Regulations) pertaining to the drawing disclosure of a design patent application are:

37 CFR § 1.84

37 CFR § 1.152

37 CFR § 1.121

The following additional rules have been referred to in this guide:

37 CFR § 1.3

37 CFR § 1.63

37 CFR § 1.153

A copy of these laws and rules are included in the Appendix of this guide.

The practice and procedures relating to design patent applications are set forth in chapter 1500 of the Manual of 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.

Types of Designs and Modified Forms
An ornamental design may be embodied in an entire article or only a portion of an article, or may be ornamentation applied to an article. If a design is directed to just surface ornamentation, it must be shown applied to an article in the drawings, and the article must be shown in broken lines, as it forms no part of the claimed design.

A design patent application may only have a single claim. 37 CFR § 1.153. Designs that are independent and distinct must be filed in separate applications since they cannot be supported by a single claim. Designs are independent if there is no apparent relationship between two or more articles. For example, a pair of eyeglasses and a door handle are independent articles and must be claimed in separate applications. Designs are considered distinct if they have different shapes and appearances even though they are related articles. For example, two vases having different surface ornamentation creating distinct appearances must be claimed in separate applications. However, modified forms, or embodiments of a single design concept may be filed in one application. For example, vases with only minimal configuration differences may be considered a single design concept and both embodiments may be included in a single application. An example of modified forms appears in Appendix II.

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.

Improper Subject Matter for Design Patents
A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. Similarly, a design for an article of manufacture that is hidden in its end use and whose ornamental appearance is of no commercial concern prior to reaching its end use, lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. In addition, 35 U.S.C. 171 requires that a design to be patentable must be “original”. Clearly a design which simulates a well known, or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a Design Patent Application (35 U.S.C. 171 and 37 CFR § 1.3).

Invention Development Organizations
Invention Development Organizations (IDO) are private and public consulting and marketing businesses that exist to help inventors bring their inventions to market, or to otherwise profit from their ideas. While many of these organizations are legitimate, some are not. Be wary of any IDO that is willing to promote your invention or product without making a detailed inquiry into the merits of your idea and giving you a full range of options which may or may not include the pursuit of patent protection. Some IDOs will automatically recommend that you pursue patent protection for your idea with little regard for the value of any patent that may ultimately issue. For example, an IDO may recommend that you add ornamentation to your product in order to render it eligible for a design patent, but not really explain to you the purpose or effect of such a change. Because design patents protect only the appearance of an article of manufacture, it is possible that minimal differences between similar designs can render each patentable. Therefore, even though you may ultimately receive a design patent for your product, the protection afforded by such a patent may be somewhat limited. Finally, you should also be aware of the broad distinction between utility and design patents, and realize that a design patent may not give you the protection desired.

Elements of a Design Patent Application
The elements of a design patent application should include the following:

In addition, the filing fee set forth in 37 CFR 1.16(f) is also required. See insert for schedule of current fees. If applicant is a small entity, (an independent inventor, a small business concern, or a non-profit organization), the filing fee is reduced by half if the small entity files a Statement Claiming Small Entity Status (PTO/SB/09 - see insert for sample form).

The Preamble
The Preamble, if included should state the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article in which the design is embodied. All information contained in the preamble will be printed on the patent, should the claimed design be deemed patentable.

The Title
The Title of the design must identify the article in which the design is embodied by the name generally known and used by the public. Marketing designations are improper as titles and should not be used. A title descriptive of the actual article aids the examiner in developing a complete field of search of the prior art and further aids in the proper assignment of new applications to the appropriate class, subclass, and patent examiner, as well as the proper classification of the patent upon allowance of the application. It also helps the public in understanding the nature and use of the article embodying the design after the patent has been published. Thus, applicants are encouraged to provide a specific and descriptive title.

The Figure Descriptions
The Figure Descriptions indicate what each view of the drawings represents, i.e., front elevation, top plan, perspective view, etc.

Any description of the design in the specification, other than a brief description of the drawing, is generally not necessary since, as a general rule, the drawing is the design’s best description. However, while not required, a special description is not prohibited.

In addition to the figure descriptions, the following types of statements are permissible in the specification:

1. Description of the appearance of portions of the claimed design which are not illustrated in the drawing disclosure (i.e., “the right side elevational view is a mirrorimage of the left side”).

2. Description disclaiming portions of the article not shown, that form no part of the claimed design.

3. Statement indicating that any broken line illustration of environmental structure in the drawing is not part of the design sought to be patented.

4. Description denoting the nature and environmental use of the claimed design, if not included in the preamble.

A Single Claim
A design patent application may only include a single claim. The claim defines the design which applicant wishes to patent, in terms of the article in which it is embodied or applied. The claim must be in formal terms to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” The description of the article in the claim should be consistent in terminology with the title of the invention.

When there is a properly included special description of the design in the specification, or a proper showing of modified forms of the design, or other descriptive matter has been included in the specification, the words “and described” should be added to the claim following the term “shown”, and the claim should read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.”

Drawings or Photographs
The drawing disclosure is the most important element of the application. Every design patent application must include either a drawing or a 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 disclosure 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. Photographs, in lieu of drawings, are permitted subject to the requirements of 37 CFR §1.84 and §1.152. Applicant should refer to these rules, included in Appendix II of this guide. These rules set forth in detail the requirements for proper drawings in a design patent application.

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 symmetrical, a view should be provided of one side and a statement made in the drawing description that the other side is identical/symmetrical. 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 which 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 and Drafting Symbols
The drawing should be provided with appropriate surface shading which shows clearly the character and contour of all surfaces of any 3-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 black color as well as color contrast. Lack of appropriate surface shading in the drawing as filed may render 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, the addition of surface shading after filing may be viewed as new matter. New matter is anything that is added to, or deleted 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 in Appendix III and IV, respectively).

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.

Photographs
The Office will accept high quality black and white photographs in design patent applications only after the granting of a petition filed under 37 CFR §1.84(b)(1) requesting that photographs be accepted. Petitions to accept photographs as drawings will be considered by the Primary Patent Examiner and will be granted if the requirements of 37 CFR § 1.84(b) are complied with. That is, the appropriate fee set forth in 37 CFR § 1.17(h) has been included and the three sets of photographs required under 37 CFR §1.84(b)(1)(ii) have been included. If other provisions of 37 CFR §1.84(b) for photographs have not been complied with (e.g., the photographs are not on double weight photographic paper, are not properly mounted, or details are not adequately reproducible), such lack of compliance will not bar the grant of a petition to accept the photographs but rather will form the basis of subsequent objection to the quality of the photographic disclosure. If the details, appearance and shape of all the features and portions of the design are not clearly disclosed in the photographs, this also will not be a bar to the grant of a petition to accept the photographs but would form the basis of a rejection of the claim under 35 U.S.C. 112, first paragraph as nonenabling.

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.

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 and color photographs will be accepted as formal drawings in design applications as long as they meet the requirements set forth in 37 CFR § 1.84(a)(2).

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 must 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. If no disclaimer has been included, the omission of color in the later filed formal drawings will be treated as introducing new matter into the claim, 35 U.S.C. 132. A disclaimer may only be used when filing informal drawings as 37 CFR § 1.152(a)(2) requires that the disclosure in formal photographs be limited to the design for the article claimed.

The Oath or Declaration
The oath or declaration required of the applicant must comply with the requirements set forth in 37 CFR §1.63 (see insert for sample declaration form and see Appendix IV for a copy of the rule).

So that the applicant will better understand what constitutes a complete disclosure, examples of drawing disclosures and their accompanying specifications are provided on the following pages.