Design patents allow an applicant to protect the ornamental aspects of functional inventions. If the appearance of your invention, separate from the way it works, is valuable, design patent may be a good option to protect this intellectual property.
Although design patents commonly include drawings of variations of the claimed design, a recent holding by the U.S. Court of Appeals for the Federal Circuit (Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC) demonstrates a risk of including too many such examples in an application (several examples from this case depicted below) .
A design patentee can prevent others from selling products whose design is embodied by drawings included in the patent. The more variations of the design that are included in the patent, the more variations the patent holder is able to prevent others from selling. If the PTO concludes that a design patent application with multiple embodiments claims a patentable design, with all of the embodiments being variations of it, a patent including all of the embodiments can issue. However, if the PTO concludes that the range of embodiments is too broad because, for example, some examples embody designs that are distinct from each other, it may issue a restriction requirement, asking the applicant to choose which design to pursue in that application. The applicant can respond by amending the application, identifying which embodiments reflecting a single design to retain in the application and removing the others.
The applicant may still seek a patent with the other embodiments by filing another application that includes them, called a divisional (which must be filed before the first application issues as a patent), although an applicant may also elect not to file a divisional. Under the Federal Circuit’s recent holding, however, embodiments that are removed from an application in response to a restriction requirement and not claimed in a divisional in effect become abandoned to the public domain. Protection for such non-chosen embodiments therefore requires the filing of a divisional application.
Thus, although including multiple variations in an application for a design patent can yield a patent with a broader scope, applicants should be prepared to file a divisional to receive protection of all embodiments disclosed in the application as originally filed in the event the PTO issues a restriction requirement.