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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By "exiting" do you actually mean "existing"? If so, please edit the question.– Eric S ♦Jul 18, 2019 at 13:26
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Questions: What country are you filing in and what country is the utility patent in?– Eric S ♦Jul 18, 2019 at 13:35
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This article may provide insight: bereskinparr.com/doc/…– Eric S ♦Jul 18, 2019 at 13:36
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No the article doesn’t apply, Utility Patent has been issued for a while, now we won’t to protect the design of the product as the shape is very important to the product as well. So the question is do you cite the current Utility Patent in the design patent and can the inventor file for a Design Patent after the Utility Patent has issued? If you know the answer feel free to answer, if you’re Googling then there is a lot of conflicting post, don’t bother.– user22249Jul 18, 2019 at 17:36
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1Does your utility application show the design you would like to patent?– George White ♦Jul 19, 2019 at 0:59
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1 Answer
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.
answered Jul 18, 2019 at 19:35
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1Thank you, but I still did not get my true question answered and that is do I reference/cite the Utility Patent in the Design Patent as I intend to let the USPTO tell me whether I can get the Design Patent via an office action. Jul 18, 2019 at 22:49
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@user22249 What I think George White is indicating and also why I asked my questions to your original question is that if the design you are trying to patent is shown in any of the figures in your utility patent, then you won't be able to obtain a design patent (if you go beyond the 12 month grace period). If you don't reference the utility patent then I suppose the USPTO might not see the utility patent.– Eric S ♦Jul 18, 2019 at 23:04
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