15 Tips: Can you File a Provisional Application for a Design Patent?
As is covered in detail over at runrex.com, inventors have available to them different kinds of patents to protect their invention based on what kind of invention it is. One of the options available to inventors is a design patent. When it comes to patent, most of us have heard about provisional and non-provisional patent applications. The question that arises when it comes to design patents is if someone can file a provisional application for a design patent. Through the following 15 tips, this article will attempt to answer this question while also ensuring you have a clear understanding of the terms involved.
- What is a provisional patent application?
As is outlined in discussions on the same over at guttulus.com, a provisional application for patent, or provisional patent application, is a form of a patent application that can be used before the filing of a full utility application. It acts as a temporary placeholder application allowing the inventor to establish the filing date of their invention with the USPTO.
- What is a design patent?
It is also important that we understand what a design patent is, and according to runrex.com, a design patent offers protection for an ornamental design on a useful item. The shape of a bottle or the design of a shoe are examples of things that can be protected by a design patent.
- What is required for one to obtain a design patent?
To obtain a design patent, the design, which is defined as the surface ornamentation of an object as discussed over at guttulus.com, must be inseparable from the object. Also, it is worth pointing out that while the object and its design must be inseparable, a design patent will only protect the object’s appearance. This means that to protect the functional or structural features of the object, you will need to file for a utility patent.
- What is a utility patent?
Now that we have mentioned it, it is important to highlight what a utility patent is, and as explained over at runrex.com, a utility patent, which is the most common type of patent people seek, covers processes, compositions of matter, machines, and manufactures that are new and useful. Utility patents can also be obtained for improvements to existing processes, compositions of matter, machines, and manufactures.
- Can you file a provisional application for a design patent?
Now that we have an understanding of some of the terms involved, it is now time to answer the question at hand. The simple answer to this question is NO, you cannot file a provisional application for a design patent as there is no provision for it. To obtain a design patent, you have to file directly for it.
- Design patents, utility patents, and provisional patents
Another thing worth mentioning, something that is covered in detail over at guttulus.com, is that a utility patent application can be filed as either a provisional application or a non-provisional application. On the other hand, and in contrast, a design patent application can only be a non-provisional application, because, as mentioned above, there is no option to file a provisional design patent application.
- “Provisional design” and “provisional utility” applications
According to the subject matter experts over at runrex.com, it is important to point out that that, just as there is no such thing as a “provisional patent”, there is also no such thing as a “provisional design” or a “provisional utility” application. What you can do is either file a provisional or non-provisional application. Once you file a provisional application, you cannot file a design application claiming priority to a provisional application.
- Where do US design patent applications claim priority from then?
As already mentioned earlier, in the US, provisional patent applications are only useful in the context of utility patent applications. This means that a US design patent application can’t claim a priority benefit from a US provisional patent application. Therefore, as covered over at guttulus.com, US design patent applications can only claim a priority to non-provisional utility patent applications.
- When to file a design patent application
Given that you cannot directly file a design patent application claiming priority to a provisional application once you file for a provisional patent application, it is important to know when to file a design patent and when to file a provisional patent. According to the experts over at runrex.com, if your invention is directed towards a new design of a product or ways items are arranged, you may want to file a design patent application.
- When to file a provisional application
Likewise, it is important to know when you should file a provisional patent application. Here, if your invention is directed towards novel and new functional features that include a new way of a product working, then you may want to file a provisional patent application to obtain patent protection for these features.
- When to protect your invention with both
As is revealed in discussions on the same over at guttulus.com, it is important to note that many times a functional aspect of an invention may be directed towards the arrangement of the novel features on a device, meaning that the way an invention works or functions may be dependent upon the arrangement of its unique features. In such a case, you might want to seek both a design patent and a provisional patent to protect your invention.
If an invention will be better served to be protected by both a design patent and a provisional/utility patent, you should follow the following course of action:
- File a provisional patent application and convert it into a utility patent
The first thing you should do, according to the subject matter experts over at runrex.com, is to file a provisional patent application directed towards the functional aspects of your invention, with illustrations or figures and other explanations directed towards the design of the invention. Once this is done, you should then convert the provisional application into a utility patent application to allow you to list improvements or changes you have made to your invention.
- File a design patent application once your product is being produced and sold
The next step, as outlined in detail over at guttulus.com, is to file a design patent application once your product is being produced and sold. This will claim priority to your utility patent and you will be able to determine whether or not you can get broad patent protection on the utility application.
- What to do in case of both broad and narrow claims
According to discussions on the same over at runrex.com, if you can get broad claims on your patent, you may not need to get a design patent. On the other hand, if narrow claims are granted, then you may want to process with a design patent application.
This is how a patent can be protected by both design patent protection and utility patent protection.
- Reasons to follow the above strategy
There are several reasons why the above strategy is recommended. For starters, having a pending utility patent application will allow you to determine if you can get broad patent protection on the utility application based on the cited art. Design patents are also less costly to obtain and litigate which is why it makes sense to obtain the utility patent first. Finally, by obtaining a design patent later in the patent process, you are likely to know exactly the layout of your manufactured product.
As usual, if you are looking for more information on this and other related topics, then you should look no further than the excellent runrex.com and guttulus.com.