For those of you new to design patents, it’s all about the drawings. A design patent consists of drawings of the claimed article, a brief description of each of the views, and a claim. The scope of protection awarded to you is defined by what you show in the drawings, so the drawings need to be complete and properly drawn. It can be extremely difficult to amend a design patent application after filing if the disclosure is not complete.
What constitutes a complete disclosure? Generally, it means views of all sides of the article: front, back, both sides, top and bottom, plus preferably a perspective view. You can get away with omitting a bottom view if you disclaim it, and you can show only one side if the opposite side is identical or a mirror image (and you say so in the specification). Failure to show the complete article can be fatal to the application, as you generally cannot add views later that were not shown in the originally-filed application.
This can be a problem for applicants who are basing their United States design patent application on a prior-filed foreign application (or a Hague filing, which we will discuss in a later blog), as the requirements in other countries differ, and filing the US application can be problematic if the foreign application’s disclosure was incomplete. I often counsel patent attorneys in other countries to look at US design requirements prior to filing in their own countries, to make sure that the disclosure would be considered complete in the U
As for the drawings themselves, I prefer black and white line drawings that have been prepared by a professional patent illustrator, as they cause the fewest complications during prosecution of the application, and allow for the possibility of disclaiming features with broken lines if they are objected to. However, if line drawings cannot show the design adequately, or if it is based on a prior filed foreign application, photographs and sometimes computer-generated renderings can be used. The problem with photographs is that they cannot include any background colors or objects, and cannot show any shadows. This can be difficult to achieve without professional editing. If the photographs have any color, that color will be part of the design and may limit the scope of coverage (as well as incur extra fees for color drawings).
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