Quote from Martin Schweiger on August 23, 2023, 11:35 pm

I cannot say much about US Design Patents, but one big difference is that they can come with a so-called "annex", that can later be used when prosecuting the Design Patent, and maybe even when you are litigating it.

Here is what my colleague Brad Czerwonky of Taylor English in Atlanta wrote to me:

"Design Patents Generally. Design patents are an increasingly popular (1) form of intellectual property for protecting the aesthetic design or “look” of an article of manufacture. Largely described as “industrial designs” or simply “designs” in non-U.S. jurisdictions, design patents are, as their name suggests, part of the U.S. patent regime. Design patent applications face rules for patentability that are nearly identical to those faced by utility patent applications and must
similarly navigate and clear a rigorous examination process before the grant of enforceable rights.

Requirements. A design patent application must specifically meet the requirement of utility or usefulness under 35 U.S.C. § 101, at least with respect to the underlying article of manufacture; written description, enablement, and definiteness requirements under 35 U.S.C. § 112; the novelty requirement under 35 U.S.C. § 102; and the non-obviousness requirement under 35 U.S.C. § 103.

Prosecution Risks. Compliance with various patentability requirements, especially the written description requirement, has recently taken on greater significance because of general tightening of USPTO rules surrounding examination of design patent applications; ambiguity in the USPTO rules and examiner discretion in application of the rules; U.S. cases in which a design patent application has been rejected before issue or invalidated after issue for inadequate disclosure, or found not be infringed based on narrow claim scope; the use of continuing applications to balance the usually
narrower design patent protection through separate protection of multiple aspects of an overall design; and prosecution history estoppel risk, i.e., an applicant’s election of a single design from among several designs identified by an examiner narrowing the scope of the elected design claim during later litigation.

Appendix Option. While not officially recognized as an option by USPTO officials (2) and not used by many applicants, an appendix can provide support for 1) amendments during prosecution and 2) continuing applications claiming designs of different scope. While a limited written description is usually permitted in the body of a design patent specification, it generally must not expand or cast doubt on what the drawings disclose and claim and generally cannot discuss subject matter not shown in the drawings.

Appendix Defined. An appendix is usually a set of extra drawings and an accompanying description filed with a U.S. patent application that is not intended to be examined. The appendix generally discloses, but does not claim, one or more narrower, broader, or simply different embodiments of a design and, in some cases, additional uses or configurations. Because it is not required to begin with, an appendix can include color photographs, drawings with handwritten markings, and any form of accompanying written description.

Treatment and Use of an Appendix. U.S. patent examiners, at least informally in office actions and interviews, recognize the right of an applicant to file and draw material from an appendix, generally understand the purpose of an appendix, and in some cases will, on the record, even accept the appendix as providing support for amendments and/or continuations even as they require that any mention of the appendix be struck from the specification.

Frequency of Use. Use of an appendix varies widely. While a sampling of the 10 latest issued U.S. patents, each handled by a different U.S. practitioner or law firm, reveals that none included an appendix or the equivalent (3), a sampling of the 10 latest U.S. patents to #1 design filer Nike, Inc. reveals that 70% included an appendix or the equivalent, and a sampling of the 10 latest U.S. patents to #4 Apple, Inc. reveals that 90% included an appendix or the equivalent. Each of the applications to Nike or Apple was handled by one of four firms known for design patent work.

Examples. Example appendices can be found in the file histories of U.S. App. Nos. 29/426,587 to Apple, Inc., 29/592,948 to Rubbermaid Commercial Products, LLC, and 29/668,913 to Anisa International, Inc.

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1 While they constitute less than 10% of total U.S. patent filings, U.S. design patent filings in 2023 are on track to be approximately
double that of filings in 2005 and with, rare exception, have increased each year since then.
2 Neither the USPTO Manual of Patent Examining Procedure (M.P.E.P.) nor the USPTO website discuss the option.
3 An equivalent includes filing extra drawings with the application and cancelling same by preliminary amendment at or after filing.