Practice Tip: Claiming Priority Between Design and Utility Patent Applications
- Aug 26 2015 |
- Category: News
There is perhaps no better example of the potential value of a design patent than the battle between electronic giants Apple and Samsung. However, while Apple vs. Samsung serves as a general reminder not to overlook the importance of design patents, it does not speak to the strategic advantage that can be gained when considering the interplay between design and utility patent application filings. Indeed, many practitioners separate design applications from utility applications even where they relate to the same product.
What is often overlooked in separating design applications from utility applications relating to the same product is the ability to file a utility application claiming priority to a design application, and vice versa. Later-filed utility applications can, for example, leverage the priority data of an earlier-filed design application in order to antedate a reference or, as in the case of In re Mahurkar, avoid a 35 U.S.C. § 102(b) on-sale bar. In In re Mahurkar, the priority claim of a utility application to an earlier-filed design application was allowed based upon a finding that the drawings in the design application adequately described the claimed subject matter of the utility application in accordance with 35 U.S.C. § 112. As this priority date was less than one year after the earliest offer-for-sale, a 35 U.S.C. § 102(b) on-sale bar was avoided.
The biggest challenge in pursuing a utility application claiming priority to an earlier-filed design application is 35 U.S.C. § 112, which requires that the drawings in the earlier-filed design application adequately describe the claimed subject matter of the utility application. Indeed, the written description requirement may be, in some cases, prohibitive, particularly with respect to more complex and/or non-mechanical subject matter.
Later-filed design applications can be of particular strategic benefit in that the life of a design patent is not limited by the filing or priority date of the earlier-filed utility application. Rather, design patents command a term of fourteen years from issuance for those issuing based on applications filed on or before May 13, 2015, and fifteen years for those issuing based on applications filed after May 13, 2015. Thus, where a design patent claims priority to a utility application, the term of a design patent issuing therefrom shifts further into the future, without relinquishing priority, as compared to a scenario where design and utility applications are concurrently filed.
However, although the filing of a design patent application claiming priority to a utility application is available at any time during the pendency of the utility application, there are limits to the practice as well. One such limit is the strict drawing requirements in design applications. In particular, as noted in MPEP § 1502.03, ¶ 15.48, “[t]he necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture.” In other words, the ability to file a design application claiming priority to a utility application is effectively limited by the detail of the drawings as-filed in the utility application. This issue was recently highlighted in In re Owens, where the Federal Circuit denied a priority claim in a design patent application where the prior filed utility application drawing did not include broken lines. The addition of these broken lines in the design patent application was deemed new matter, rendering the priority claim ineffective.
Despite these challenges, in appropriate circumstances the rewards from filing utility applications with sufficient drawings to support subsequent design applications, and vice versa, can be a very useful tool.
 See Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314 (2012); see also Apple, Inc. v. Samsung Electronics Co. Ltd., 695 F.3d 1370 (2012); see also Apple, Inc. v. Samsung Electronics Co. Ltd., 727 F.3d 1214 (2013).
 71 F. 3d 1573 (Fed. Cir. 1995).
 See MPEP § 2701.
 Case No. 12-1261 (Fed. Cir., Mar. 26, 2013) (Prost, J.)