Statutes and Rules Applicable

Design patents are provided for in 35 U.S.C. chapter 16. In

addition, international design applications filed under the Hague Agreement Concerning the

International Registration of Industrial Designs (“Hague Agreement”) are provided for in 35

U.S.C. chapter 38. Certain statutory provisions in 35 U.S.C. chapter 38 provide for the

applicability of the provisions of 35 U.S.C. chapter 16 to international design

applications. See

35 U.S.C. 382(c)

,

383

, and

389(b)

. See

MPEP Chapter 2900

for additional

information concerning international design applications.

The right to a patent for a design stems from:

35 U.S.C. 171

Patents for designs.

(a) IN GENERAL.—Whoever invents any new, original, and

ornamental design for an article of manufacture may obtain a patent therefor,

subject to the conditions and requirements of this title.

(b) APPLICABILITY OF THIS TITLE.—The provisions of

this title relating to patents for inventions shall apply to patents for designs,

except as otherwise provided.

(c) FILING DATE.—The filing date of an application

for patent for design shall be the date on which the specification as prescribed

by section 112 and any required drawings are filed.

For design applications filed under 35 U.S.C. chapter

16:

37 CFR 1.151  Rules applicable.

The rules relating to applications for patents for other inventions or

discoveries are also applicable to applications for patents for designs except as

otherwise provided.

For international design applications designating the United

States:

37 CFR 1.1061 Rules applicable.

(a) The rules relating to applications for patents for

other inventions or discoveries are also applicable to international design

applications designating the United States, except as otherwise provided in this

chapter or required by the Articles or Regulations.

signs except as

otherwise provided.

For international design applications designating the United

States:

37 CFR 1.1061 Rules applicable.

(a) The rules relating to applications for patents for

other inventions or discoveries are also applicable to international design

applications designating the United States, except as otherwise provided in this

chapter or required by the Articles or Regulations.

(b) The provisions of §

1.74

, §

1.84

, except for §

1.84(c)

, and §§

1.152

through

1.154

shall not apply to

international design applications.

Other rules relating only to design applications, such as

37 CFR

1.152

-

1.155

and those contained in 37 CFR

Part 1, Subpart I, are reproduced in the sections of this chapter and in

MPEP

Chapter 2900

, as appropriate.

It is noted that design patent applications are not included in the Patent

Cooperation Treaty (PCT), and the procedures followed for PCT international applications

are not to be followed for design patent applications.

The practices set forth in other chapters of this

Manual of

Patent Examining Procedure

(MPEP) are to be followed in examining applications

for design patents, except as particularly pointed out in this chapter or in

MPEP

Chapter 2900

. Also, with respect to international design

applications that designate the United States,

35 U.S.C. 389(b)

provides that “[a]ll

questions of substance and, unless otherwise required by the treaty and Regulations,

procedures regarding an international design application designating the United States

shall be determined as in the case of applications filed under chapter 16.” Accordingly,

many of the practices set forth in this chapter, such as those pertaining to examination in

MPEP §

1504

, are applicable to international design applications that

designate the United States. Differences in practices are noted in this chapter where

applicable.

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