This section lays out details of provisional applications filed on or after September 16, 2012 along with general information. For instance, claims and the oath or declaration are not required in provisional applications. This section also details how to convert nonprovisional to provisional applications and provisional to nonprovisional applications.

Converting a provisional to a nonprovisional is not recommended because the term of any patent issuing from the application will be measured from at least the filing date of the prior application. As an alternative, it is recommended to claim the benefit of the provisional application.

• Review Ed9 10.2019: 201.04

Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.

• Review Ed9 10.2019: 706.07(h)

This section attempts to define what a design is in relation to design patents. Essentially, in a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself.

• Review Ed9 10.2019: 1502

In general terms, a “utility patent” protects the way an article is used and works,while a “design patent” protects the way an article looks. This section further outlines the common differences between design and utility patents.

• Review Ed9 10.2019: 1502.01

This section discusses the specification of a design patent application. It covers details about the preamble which if included, should state the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.

This section also includes details on the title of the design, the description, and the design claim. A design patent application may only include a single claim.

• Review Ed9 10.2019: 1503.01

This section covers drawings in design patent applications. It covers topics such as views, the use of surface shading and surface treatments, using broken lines, and photographs and color drawings. For instance, drawings are normally required to be submitted in black ink on white paper.

• Review Ed9 10.2019: 1503.02

In design patent applications, ornamentality, novelty, nonobviousness enablement and definiteness are necessary prerequisites to the grant of a patent. The inventive novelty or unobviousness resides in the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.

• Review Ed9 10.2019: 1504

This section covers guidelines for computer-generated icons. Essentially, the USPTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under 35 U.S.C. 171.

• Review Ed9 10.2019: 1504.01(a)

While the claimed design must be embodied in an article of manufacture, it may encompass multiple articles or multiple parts within that article.

• Review Ed9 10.2019: 1504.01(b)

This section refers to rules and statutes dealing with novelty. Design patents must follow the same rules regarding novelty and 35 U.S.C. 102 as any other patent. Registration of a design abroad is considered to be equivalent to patenting under 35 U.S.C. 119(a)-(d) and pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. 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.

• Review Ed9 10.2019: 1504.02

This section covers considerations under 35 U.S.C. 112. No new matter may be added to a design patent application. It also touches on 35 U.S.C. 112 second paragraph or part (b) for applications filed after September 16, 2012.

• Review Ed9 10.2019: 1504.04