Patent It Yourself - PDF Archive

298 | Patent it YOURSELF
mechanism, or its connector structure, and a design patent
application on the shape of the computer’s case.
Design patent applications are very easy to prepare,
except for the drawings. If filing by mail, a design patent
application consists of:
• A design Patent Application Transmittal (Form 10-11
or PTO/SB/18)
• A fee Transmittal (Form 10-3 or PTO/SB/17)
• The fee by check, money order, or CCPF (see Form
10-3, Appendix 4, Fee Schedule, or check the PTO
website)
• A Drawing or Drawings in black-line format.
• A Specification (Form 10-10) having the following five
elements:
■■
■■
■■
Preamble (should state the nature and intended use
of the design)
Cross-Reference to Related Applications† (should
state any related applications you have (or will) file)
Statement Regarding Federally Sponsored
Research† (used when the design was made under a
government contract)
■■
Drawing Figures (describe each drawing figure
briefly)
■■
Claim (state “I claim the ornamental design for (title
of your design) as shown.”)
• A PAD (Form 10-1 or PTO/SB/01)
• A receipt postcard
■■
You may also file an Application Data Sheet (ADS)
(Form PTO SB/14) but this is optional if filing by
mail.
† If this section is not applicable, you may eliminate it or
add the phrase “Not Applicable”
A design application specification with the five elements,
above, is provided as Form 10-10 and a completed version is
provided as Fig. 10S.
If you believe that your invention has a unique ornamental
appearance that is significantly different from anything heretofore
designed, you can file a design patent application on it.
Although not 100% kosher, some inventors file a design
application on the external appearance of a utility invention
that is unpatentable in the utility sense, and that has
unfinalized or trivial novelty in the design sense. They do
this mainly to be able to truthfully and legally state for a
few years that the invention is “patent pending.”
The first step in completing a design application is to
prepare drawings in the same format as for a regular patent
application. (See Section A, above.) However, the drawings
for the design application should show only the exterior
appearance of your invention; no interior parts or workings
should be shown and no reference numerals are used. The
drawings of a design patent application, whether formal
or informal, must be done with good surface and edge
shading; see Fig. 10R.
If your invention is a computer-generated symbol (such
as an icon like a trash can or a type font), you can file a
design patent application on it, but you must show more
than just the symbol per se. This is because the pertinent
statute (35 USC 171) requires that the design be “an article
of manufacture” and the PTO does not consider a computer
symbol, per se, as an article. The solution? Simply include
a computer display (monitor or display panel) in your
drawing and show the computer-generated symbol on the
display. Both the symbol and the display should be drawn
in solid lines.
Usually only one embodiment of a design is permitted.
If you have several embodiments or versions of your design,
you can include these all in one application. But if the
examiner feels they don’t all relate to the same inventive
concept, you’ll be required to restrict the application to one
embodiment. In this case, you can file a divisional application(s)
on the other embodiment(s), provided you do so
before the original application issues. (See Chapter 14 for
divisional applications.)
It’s important to remember that drawings of your design
application should have enough figures to show all of the
details of the external surface of your design. A company
I once worked for had an important design patent on a TV
set held invalid because the design patent’s drawings failed
to show the rear side of the TV set.
Once you’ve made your drawings (in formal or informal
form) fill out Form 10-10 as indicated in Fig. 10S. The
title of your design can be very simple and need not be
specifically directed toward your invention. For example,
“Bicycle” is sufficient. Each view of the drawing should
be separately indicated. For example, “Fig. 1 is a front
perspective view of my bicycle. Fig. 2 is a side view,” etc.
Note that the design application has one claim only, and
to write that claim you need merely fill in the blank on
Form 10-10 with the title of your design. In the event that
you offer more description—for example, you elaborate on
figures more than merely stating the type of view—then, at
the end of your claim, add the words, “and described.”
Fill out the fee transmittal (Form 10-3) (the amount is
on the form, in Appendix 4, and at the PTO’s website). Also
complete the PAD (Form 10-1). (The SED Statement is on
the fee transmittal.) No transmittal letter is needed since
Form 10-10 inherently provides a transmittal letter.
The design application with the drawings, form,
declaration, and receipt postcard, should be sent to the PTO
in the same manner as your regular patent application. Be
sure to keep an identical copy of your design application,
including its drawings.