What is the application process?

Applicants file their application with the United States Patent and Trademark Office (USPTO). The USPTO will then examine the applications, generally in order of their filing date, noting that it is possible to request expedited examination.

Examination and appeals

How are the examination and appeals procedures conducted?

The examination process includes a review of the application’s adherence to technical and substantive requirements. This review includes examining the completeness of the drawings and disclosure and comparing the claimed subject matter to the prior art. Prior art consists of issued patents and published materials. Bases for rejection include incomplete disclosure and the presence of the design in the prior art (in a single reference or a combination of references). The examiner will then deliver an office action to the applicant describing any technical deficiencies (rejections) and substantive deficiencies affecting patentability. The office action may further include the examiner’s recommendations for amendments to the application to put it in form for allowance. If the claimed subject matter is found to be patentable, the applicant will receive a design patent covering the claimed design on payment of an issue fee.

An applicant may file an appeal with the Patent Trial and Appeal Board (PTAB) after having been given a final rejection or after the claim has been rejected twice. If the applicant is dissatisfied with the outcome before the PTAB:

  • the applicant may have remedy by civil action against the Director of the USPTO in the United States District Court of the Eastern District of Virginia; or
  • the applicant may appeal the PTAB’s decision to the United States Court of Appeals for the Federal Circuit (Federal Circuit).

What are the opposition rules?

While a granted design patent may be challenged, a pending design patent application cannot be opposed. Even though there is no formal procedure for opposing a pending design patent application, just as for a pending utility patent application, a third party may submit published patent applications, patents or other printed publication for the USPTO to consider during prosecution in a given application (see 35 USC Section 122(e); 37 CFR 1.290; Manual for Patent Examining Procedure 1134). However, given that design patent applications are not open to the public, and thus the nature of the pending design is unknown, the procedure is rarely, if ever, used for pending design patent applications.

Registration time frame

What are the registration time frames?

As of August 2020, the USPTO reports average pendency of a design patent application as 21.6 months.

Removal from register

In what instances does removal from the register occur?

Not applicable.

Law stated date

Correct on:

Give the date on which the information above is accurate.

21 November 2020.