A reissue application can be filed when there is an error in the patent which makes it inoperable. There are three categories of errors that an applicant can show on a reissue application. These errors include defective specification, claiming more or less than they had a right to, and other errors (typically inventorship or priority issues).

A design reissue application can be filed based on the “error” of failing to include a design for a patentably distinct segregable part of the design claimed in the original patent or a patentably distinct subcombination of the claimed design.

A reissue design application claiming both the entire article and the patentably distinct subcombination or segregable part would be proper under 35 U.S.C. 251, if such a reissue application is filed within two years of the issuance of the design patent, because it is considered a broadening of the scope of the patent claim.

Generally, if a design was created in the U.S., it requires a foreign filing license before it can be filed in a foreign IP office.

A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign country or in a foreign or international intellectual property authority if the invention was made in the United States, and an application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed; or no application on the invention has been filed in the United States.

A foreign filing license is generally granted on the filing receipt of a U.S. design patent application. A request for a foreign filing license can be requested by fax.

Since May 13, 2015, when the U.S. began participating in the WIPO Hague International Design System, the requirements of a fee and petition under 37 CFR 1.184(a)(2)(i) stating that color drawings are the only practical medium for illustrating the claimed design were eliminated. Nevertheless, the specification must still include a statement that:

“The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.”

Because color drawings may now be filed in a design application without the need for a petition, applicants may prefer to represent color using color drawings instead of using graphic symbols, but 37 CFR 1.84(n) indicates that graphic drawing symbols and other labeled representations may be used for conventional elements where appropriate, subject to approval by the Office.

The following symbols should be used to indicate various materials where the material is an important feature of the invention:

Solid black surface shading is not permitted except when used to represent the color black as well as color contrast.

Reexamination allows a party to request that the Patent Office reexamine an already-granted patent on the basis of patents and printed publications that raise a substantial new question of patentability. We maintain a dataset currently of design patent reexamination proceedings filed since 2012 and of 184 outcomes, patentability is confirmed 46% of the time, compared to patentability confirmed 28% of the time for instituted IPR and PGR proceedings.

A person’s name, image and likeness (NIL) are attributes that identify a specific person, including their name, image, voice, signature and other personal identifiers. NIL rights are generally protected under state law, and student-athletes and professional athletes and entertainers can protect and commercialize their NIL.

The World Intellectual Property Organization administers the Hague System for International Registration of Designs which provides for filing a single International Application with the International Bureau, designating protection in member states.

The “ordinary observer” test for design patent infringement essentially asks whether the patented and accused designs are “substantially the same” in overall appearance. Although courts are very skilled in listing differences between the two designs, the final infringement determination is very subjective, being based on the personal observations and feelings of the fact-finder.

In the 2008 en banc decision of Egyptian Goddess v. Swisa, the Federal Circuit abolished the “point of novelty” test that, despite its flaws, had brought some objectivity to the infringement determination. In its place, the Court in Egyptian repeatedly emphasized the need to view the patented and accused designs in the context of the prior art in order to provide a frame of reference for determining substantial similarity.

However, in one sentence of Egyptian, the Court said that the prior art did not need to be reviewed if the patented and accused designs were “sufficiently distinct”. But there were no guidelines, in Egyptian or later cases, about how to determine whether two designs are “sufficiently distinct”. Since then, an outsized number of cases have relied on this clearly subjective determination.

Read More

The WIPO Digital Access Service (DAS) for electronic priority document exchange facilitates an applicant requirement to provide certified copy of priority documents to meet Paris Convention priority requirements.

For US design patents, late provision of an access code or retrieval failure presents system challenges and filing by mail may become necessary, presenting its own challenges as IP Offices go digital only; the DAS access code should be provided in an Application Data Sheet (ADS) and confirmed on filing receipt.

For accessing priority to a US document the WIPO DAS code is the same 4-digit US application “confirmation code” provided that the Applicant has opted in to electronic access.

WIPO provides a list of participating members and a system to obtain a certificate of availability to confirm that Offices should be able to retrieve the priority document.

On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) decided LKQ v. GM,  abolishing the long-standing Rosen-Durling test for design patent obviousness, which required a primary reference, something in existence which must appear basically the same as the claimed design, and combining with secondary references that are “so related” (in visual appearance and type).

Now, in order to rejected a claimed design as obvious, there must be a primary reference which is something analogous, in existence that is “visually similar” and secondary reference also must be analogous and although it need to come from the references themselves, there must be a record-supporting reason why a person of ordinary skill would have a motion to combine.

USPTO Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in light of LKQ v. GM.

USPTO Design Patent Examiner Materials and Resources – Impacts on Obviousness Analysis under 35 U.S.C. 103 for Designs in Light of LKQ Corp. V. GM Global Technology Operations LLC

Part 1

Part 2

AI Search

In 2025, the USPTO launched DesignVision, the first artificial intelligence (AI)-based image search tool available to design patent examiners providing centralized access and federated searching of design patents, registrations, trademarks, and industrial designs from over 80 global registers, and returns search results based on, and sortable by, image similarity.

Inventorship

In Thayler v. Vidal, the CAFC agreed with the USPTO interpreting the Patent Act definition of “inventor” at 35 U.S.C. 100(f) to require a natural person.

AI-assisted designs are patentable where human inventors contribute in some significant manner to the conception (definite and permanent idea of the complete and operative invention as it is thereafter applied in practice) or reduction to practice of the invention and make a contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention. A person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor.

Prior Art

Whereas AI-generated designs might not be patentable, for lack of inventors, it nevertheless could be prior art if publicly accessible.

Design Patents can claim the appearance of computer-generated image designs that are displayed as integral to the operation of a programmed computer. Design Patents do not protect designs per se or in the abstract, but cover designs directed to an article of manufacture. Logically, the article of manufacture responsible for creating computer-generated image designs is the computer, but since computer designs have typically been displayed on screens, the USPTO prefers that the title and claim language identify a screen, panel or monitor, and that the claimed image be surrounded by a broken line which illustrates a display screen, which may form no part of the claimed design. However, many issued design patents identify different articles of manufacture than a display screen, such as a computer, wearable devices, headsets and glasses, induction ranges, , washing machines, vehicles and construction equipment, among more.

The USPTO issued a Request for Public Comments on the Article of Manufacture Requirement for computer-generated designs, on Dec. 21, 202, a Summary of Public Views on January 19, 2021, Supplemental for Examination of Computer-Generated Electronic Images Including Computer-Generated Icons and Graphical User Interfaces, on November 17, 2023 (updated on January 29, 2024 with corrected examples and setting a comment period).