Protecting Multiple Embodiments in a Design Patent
- posted: Oct. 29, 2019
Design Patents and How to Protect Multiple Embodiements
Our Skilled USA Patent Lawyer Reviews Options
I am often asked by clients whether the United States has a provision for protecting multiple designs in a single design patent. Many other intellectual property offices, such as the EUIPO (Europen Union Intellectual Property Office) allow for multiple designs in a single application, thus saving the applicant expense in filing several design applications. However, in the United States, each design is considered a separate invention, and only a single invention can be protected in a single design patent. Attempts to include multiple variations of the design in a single application often leads to a restriction requirement, and the need to file one or more divisional applications for the non-elected embodiment(s). This scenario often results in the applicant spending more money than if they had just filed separate design applications initially.
However, there are some tactics that one can use to try to reduce the number of separate designs that need to be filed. For example, if the multiple design consists of the same structure, but in different colors, filing the design as a single black-and-white embodiment would cover essentially any color of the design (assuming that the black-and-white version is novel). If the designs consist of variations of a common structure with different features, using a single design claiming only the common portions of the structure by showing them in solid lines (with the varying portion shown in broken lines or not at all) may cover all of the different embodiments. In rare occasions, the USPTO will allow multiple variations in a single design patent if the differences between them are insignificant. If you have a collection of related designs are are thinking about design protection in the US, please contact one of our attorneys to receive guidance as to how to achieve the best and most economic protection.
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