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Dear Patents Exchange!

I have filed design patents and utility patent for my invention.

The utility patent is still under examiner and I have received an Ex Parte Quayle decision on the design patent.

Are the USPTO examiners permitted by law to have contradicting opinions and views on the invention? (not saying they have, but I'd like to know the MPEP section where such cases are discussed)

  • A design patent is for the design while a utility patent is for the technical features, so they have to check for different things. – DonQuiKong Apr 22 '17 at 9:39
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MPEP 1502 sets forth the differences between the requirements for patentability of a utility patent application and a design patent application.

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

https://www.uspto.gov/web/offices/pac/mpep/s1502.html#d0e150263

As DonQuiKong stated, there are different patentability requirements for the two types of patent applications, thus the patentability of one has no bearing on the patentability of the other. You should provide the examiners of each patent application any prior art cited by the other examiner just to ensure that the duty of disclosure has been met.

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