Design Patent Claim Construction: Written Description, Ornamentality, Functionality, and More

Description

By definition, design patents protect ornamental designs. The standard remains unsettled for determining whether a design or design feature is merely decorative--and the impact of that determination. Unlike utility patents, design patent applications are not published when the applicant files directly with the USPTO.

Further, the application's prosecution history is not publicly available until the application issues unless it is a divisional or continuation application. Consequently, less information is available about design patent applications until the issue of the application.

Counsel must find the proper balance when claiming designs. Applicants will often use portion-claiming techniques, which help protect the innovative portions of a design while making it more difficult to "design around" the patent. However, it may also make it harder to get the patent because it is more susceptible to the prior art.

Counsel should consider filing applications with multiple embodiments or filing multiple applications for a design concept with different degrees of scope.

Listen as our authoritative panel of patent attorneys examines critical considerations when defining and drafting design patent claims and discusses how the courts treat claim construction issues for design patents.