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1504.02 Novelty - 1500 Design Patents

1504.02 Novelty

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in-

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

35 U.S.C. 172 Right of priority.

The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.

The standard for determining novelty under 35 U.S.C. 102 was set forth by the court in In re Bartlett, 300 F.2d 942, 133 USPQ 204 (CCPA 1962). "The degree of difference [from the prior art] required to establish novelty occurs when the average observer takes the new design for a different, and not a modified, already-existing design." 300 F.2d at 943, 133 USPQ at 205 (quoting Shoemaker, Patents For Designs, page 76). In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference "must be identical in all material respects." Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).

The "average observer" test does not require that the claimed design and the prior art be from analogous arts when evaluating novelty. In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). Insofar as the "average observer" under 35 U.S.C. 102 is not charged with knowledge of any art, the issue of analogousness of prior art need not be raised. This distinguishes 35 U.S.C. 102 from 35 U.S.C. 103(a) which requires determination of whether the claimed design would have been obvious to "a person of ordinary skill in the art."

When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. In re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind. Inc., 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986).

It is not necessary for the examiner to cite or apply prior art to show that functional and/or hidden features are old in the art as long as the examiner has properly relied on evidence to support the prima facie lack of ornamentality of these individual features. If applicant wishes to rely on functional or hidden features as a basis for patentability, the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).

In evaluating a statutory bar based on 35 U.S.C. 102(b), the experimental use exception to a statutory bar for public use or sale (see MPEP § 2133.03(e)) does not usually apply for design patents. See In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that "experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b)." See MPEP § 2133.03(e)(6).

Registration of a design abroad is considered to be equivalent to patenting under 35 U.S.C. 119(a)- (d) and 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called ("patent," "Design Registration," etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

The laws of each foreign country vary in one or more respects.

The following table sets forth the dates on which design rights can be enforced in a foreign country (INID Code (24)) and thus, are also useable in a 35 U.S.C. 102(d) rejection as modified by 35 U.S.C. 172. It should be noted that in many countries the date of registration or grant is the filing date.

Country or Organization	Date(s) Which Can Also Be Used for 35 U.S.C. 102(d) Purposes1 (INID Code (24))	Comment
AT-Austria	Protection starts on the date of publication of the design in the official gazette
AU-Australia	Date of registration or grant which is the filing date
BG-Bulgaria	Date of registration or grant which is the filing date
BX-Benelux (Belgium, Luxembourg, and the Netherlands)	Date on which corresponding application became complete and regular according to the criteria set by the law
CA-Canada	Date of registration or grant
CH-Switzerland	Date of registration or grant which is the filing date	Minimum requirements: deposit application, object, and deposit fee
CL-Chile	Date of registration or grant
CU-Cuba	Date of registration or grant which is the filing date
CZ-Czech Republic	Date of registration or grant which is the filing date
DE-Germany	Date of registration or grant	The industrial design right can be enforced by a court from the date of registration although it is in force earlier (as from the date of filing-as defined by law).
DK-Denmark	Date of registration or grant which is the filing date
EG-Egypt	Date of registration or grant which is the filing date
ES-Spain	Date of registration or grant
FI-Finland	Date of registration or grant which is the filing date
FR-France	Date of registration or grant which is the filing date
GB-United Kingdom	Date of registration or grant which is the filing date	Protection arises automatically under the Design Right provision when the design is created. Proof of the date of the design creation needs to be kept in case the design right is challenged. The protection available to designs can be enforced in the courts following the date of grant of the Certificate of Registration as of the date of registration which stems from the date of first filing of the design in the UK or, if a priority is claimed under the Convention, as another country.
HU-Hungary	Date of registration or grant	With retroactive effect as from the filing date
JP-Japan	Date of registration or grant
KR-Republic of Korea	Date of registration or grant
MA-Morocco	Date of registration or grant which is the filing date
MC-Monaco	Date of registration or grant which is the filing date	Date of prior disclosure declared on deposit
NO-Norway	Date of registration or grant which is the filing date
OA-African Intellectual Property Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania, Niger, Senegal, and Togo)	Date of registration or grant which is the filing date
PT-Portugal	Date of registration or grant
RO-Romania	Date of registration or grant which is the filing date
RU-Russian Federation	Date of registration or grant which is the filing date
SE-Sweden	Date of registration or grant
TN-Tunisia	Date of registration or grant which is the filing date
TT-Trinidad and Tobago	Date of registration or grant which is the filing date
WO-World Intellectual Property Organization (WIPO)		Subject to Rule 14.2 of the Regulations (on defects), the International Bureau enters the international deposit in the International Register on the date on which it has in its possession the application together with the items required. Reproductions, samples, or models pursuant to Rule 12, and the prescribed fees.
1Based on information taken from the "Survey of Filing Procedures and Filing Requirements, as well as of Examination Methods and Publication Procedures, Relating to Industrial Designs" as adopted by the PCIPI Executive Coordination Committee of the World Intellectual Property Organization (WIPO) at its fifteenth session on November 25, 1994.

Rejections under 35 U.S.C. 102(d) as modified by 35 U.S.C. 172 should only be made when the examiner knows that the application for foreign registration/patent has actually issued before the U. S. filing date based on an application filed more than six (6) months prior to filing the application in the United States. If the grant of a registration/patent based on the foreign application is not evident from the record of the U. S. application or from information found within the preceding charts, then the statement below should be included in the first action on the merits of the application:

¶ 15.03.01 Foreign Filing More Than 6 Months Before U.S. Filing

Acknowledgment is made of the [1] application identified in the declaration which was filed more than six months prior to the filing date of the present application. Applicant is reminded that if the [2] application matured into a form of patent protection before the filing date of the present application it would constitute a statutory bar to the issuance of a design patent in the United States under 35 U.S.C. 102(d) in view of 35 U.S.C. 172.

Examiner Note

In brackets 1 and 2, insert the name of country where application was filed.

Form paragraphs for use in rejections under 35 U.S.C. 102 are set forth below.

¶ 15.11 35 U.S.C. 102(a) Rejection

The claim is rejected under 35 U.S.C. 102(a) as being clearly anticipated by [1] because the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent.

¶ 15.12 35 U.S.C. 102(b) Rejection

The claim is rejected under 35 U.S.C. 102(b) as being clearly anticipated by [1] because the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country more than one (1) year prior to the application for patent in the United States.

¶ 15.13 35 U.S.C. 102(c) Rejection

The claim is rejected under 35 U.S.C. 102(c) because the invention has been abandoned.

¶ 15.14

35 U.S.C. 102(d)/ 172 Rejection

The claim is rejected under 35 U.S.C. 102(d), as modified by 35 U.S.C. 172, as being clearly anticipated by [1] because the invention was first patented or caused to be patented, or was the subject of an inventor's certificate by the applicant, or his/her legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than six (6) months before the filing of the application in the United States.

¶ 15.15

35 U.S.C. 102(e) Rejection

The claim is rejected under 35 U.S.C. 102(e) as being clearly anticipated by [1] because the invention was described in a patent or published application for patent by another filed in the United States before the invention thereof by the applicant for patent.

¶ 15.16 35 U.S.C. 102(f) Rejection

The claim is rejected under 35 U.S.C. 102(f) because applicant did not himself invent the subject matter sought to be patented.

¶ 15.17 35 U.S.C. 102(g) Rejection

The claim is rejected under 35 U.S.C. 102(g) because, before the applicant"s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.

¶ 15.41 Functional, Structural Features Not Considered

Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications.

The following form paragraphs may be used in a second or subsequent action, where appropriate.

¶ 15.38 Rejection Maintained

The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.

Examiner Note

In bracket 1, insert basis of rejection.

¶ 15.40.01 Final Rejection Under Other Statutory Provisions

The claim is again and FINALLY REJECTED under [1] as [2].

Examiner Note

1. In bracket 1, insert statutory basis.

2. In bracket 2, insert reasons for rejection.

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