hypothetical situation: utility to design patent - wanted utility patent already gone; can I create a design patent based on existing utility patent

Question

I filed for a utility patent and afterward I found someone's utility patent that won't allow mine to be approved.

A close example is: applying for a specific design for a shoe and hoping that it would be an all encompassing utility patent for a shoe. Then one finds out someone already patented a more general patent that is anything surrounding the foot with no specific drawing - only a general drawing of a circle around the foot and referencing anything that goes around the foot is the all encompassing shoe patent.

Should I now file a specific design patent for my shoe - or will the more specific design that I filed for in my original utility patent cover the specific design, assuming the drawings I provided are specific and detailed?

Answer 1

Should I now file a specific design patent for my shoe[?]

Ideally, you should discuss your case with a qualified patent attorney or agent.

If you insist on self-help, you should ask yourself the key question differentiating utility vs. design patents: does the novelty principally relate to the function or the aesthetics? Keep in mind there may some overlap between function and aesthetics.

If you still have some useful function described in your patent application, that you think cannot result from the prior patent, and which you believe is not obvious, you should keep pursuing your utility patent but with appropriately narrowed claims to exclude that which is obvious in view of the prior art. Sometimes a little creativity in claim drafting is required, which is why you should really consider hiring an attorney at this stage. This will still give you a broader monopoly than a design patent.

Otherwise, last time I checked, I think there were cases of design patents based on the drawings of utility patents, and it can be done. Look this up to see how you can claim priority correctly (hopefully you haven't passed the one-year limit on prior disclosure).

All of the above assumes U.S. law, since you didn't specify otherwise.