Can an existing inventor get a design patent to protect their design if there is already an issued Utility Patent?
US Based patent.
If so, do you cite the Utility Patent in the Design Patent application?
Thank you, EZ
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Sign up to join this communityCan an existing inventor get a design patent to protect their design if there is already an issued Utility Patent?
US Based patent.
If so, do you cite the Utility Patent in the Design Patent application?
Thank you, EZ
You can theoretically get a design patent on something that also has a utility patent with a big if. It is if the design was not disclosed in the utility patent application and has not yet (or within the "grace" period) been otherwise disclosed. A fundamental requirement of any and all patent applications is that they be for something new. If the shape you want to protect is seen in a patent that issued "some time ago", then the design is no longer new.
If the specific shape is not seen in the patent or the published application or anywhere else (within the grace period and the definition of prior art) then you are free to apply for a design patent - that will have no actual relationship with the utility patent. So there is no relevance to the utility patent and no reason to think about claiming priority to it.
There are other issues between utility and design patents for the same product that are interesting but do not apply to your case if either (a) it is open and shut that your design has long ago been exposed or (b) open and shut that the design is actually new.
EDITED
One other case is that the patent application has a drawing that might be viewed as making your full design non-novel or obvious. Again, assuming the design has not otherwise been made public, you cite the patent on an Information Disclosure Statement form filed with your design patent application in order to fulfill the requirement to make the examiner aware of anything that might put your application in a bad light.