Why Not Throw in the Design of the Kitchen Sink?

The Omnibus Patent Application

Sometimes, the solution to the dilemma is to prepare and file an 'omnibus patent application' ' a single utility patent application disclosing multiple inventive features of a product. Unless a company wishes to keep some element of the product a trade secret, such an application could describe the product's functional and design aspects in as much detail as possible. In this fashion, an omnibus application can provide a treasure trove of ideas for future patent claims.

Using this strategy, a company can delay costs associated with seeking patent protection for a market-untested product's innovative aspects. Companies and inventors likely want to protect both functional and ornamental features of their products. Indeed, some investors may require it. But even if not yet ready to commit to pursuing a comprehensive patent portfolio on a new product, a company can preserve its ability to seek IP rights with an omnibus application. Then, a single, properly-crafted utility application can serve as a priority application for numerous design and utility U.S. patent applications, if warranted by a product's success.

Advantages

A new patent application can rely on another application so long as that earlier application is pending. Importantly, a design patent application can claim priority to a utility application provided that ornamental designs for the article ' including physical articles and graphical user interfaces ' are sufficiently disclosed within the initial utility application. (See Manual of Patent Examining Procedure (MPEP) '1504.20.)

Because the prosecution of a utility application typically lasts at least three years, filing for a utility patent gives applicants time to determine if a product ' and its corresponding inventive characteristics, as disclosed in the application ' need additional patent protection. Further, this period of pendency can be extended for some time, via continuation applications and Requests for Continued Examination (RCEs), depending on the circumstances.

While utility patents generally provide protection until 20 years after the filing date of the first application in the family, design patents provide protection for 14 years after issue. Thus, while a design application may claim priority to a utility patent application's filing date, the effective term of the design patent is not limited by the priority date. As such, with sufficient disclosures, a single utility application can spawn one or more design patents, the life of which can be extended into the future.

The strategy of filing an omnibus utility application may be most effective when an applicant seeks to protect multiple inventive aspects of a new product, but is unsure about either the commercial success of product or which of several alternative product designs might be best received by the market. Typically, the costs of filing for a design patent are an order of magnitude less expensive than a utility application. Even so, delaying design patent filings (and, perhaps, additional utility'patent filings) while maintaining an early priority date, can defer expenses. This will allow a business to determine if a product is successful, or which product configuration is most profitable. Further, if a product ultimately fails in the marketplace, many patent-related costs will be saved outright if no further applications are filed. On the other hand, if a product is successful, a string of design applications filed during the pendency of the initial omnibus utility patent (or continuation applications of the original application) may effectively extend the term of patent protection for the product or its replacement parts.

Additionally, filing an omnibus application may also aid a company in obtaining a product configuration trademark. The 'inherent distinctiveness' of a product configuration cannot serve as a basis for trademark protection. (Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205 (2000).) Rather, a company is required to prove 'acquired distinctiveness' to obtain trademark protection on a non-functional product configuration. (See Trademark Manual of Examining Procedure '1202.02(b).) To that end, a design patent can protect a product configuration while 'acquired distinctiveness' is accrued. An omnibus application that sufficiently discloses the product configuration will provide an applicant ample opportunity to file a corresponding design application should a copyist strike before the requisite distinctiveness is acquired.

Best Practices

Importantly, a company should ensure that all prospective inventions ' including any known alternative ornamental designs ' are described in detail in any omnibus application. Disclosures of functional inventive concepts must meet the enablement, written description, and best mode requirements under 35 U.S.C. '112. Likewise, design disclosures must also meet the requirements of this statute by sufficiently depicting each design that may be claimed in the future. Typically, design patent applications include the front, back, top, bottom, left, right and perspective views, although more views maybe necessary for certain designs. Formal patent drawings, however, are not required at this stage ' photographs of prototypes, or even Computer Aided Design (CAD) drawings of sufficient quality and detail may suffice. Although such figures will preserve design patent rights when included in an omnibus application, they can later be formalized or, if determined to be extraneous, removed from the utility application during prosecution. It is best practice for an applicant to recite which portions of an ornamental design are optional. An applicant should, where appropriate, explain that the mirror image of each design is also disclosed.

For certain software-related inventions, applicants may wish to disclose graphical user interfaces related to their functional software inventions. Animated user interfaces, and any known alternatives, should ideally be disclosed as a sequence of figures comprising, in effect a 'flip book.' While the figures need not be formalized, they should closely depict on-screen activity and should include the screen of the computer, TV or smart phone that will display the user interface. Applicants should also recite which portions of the sequence ' and which portions of each figure in the sequence ' that are optional.

Additionally, the omnibus application could include a discussion distinguishing the functional and ornamental features of a product. For example, the specification may explain how additional alternative ornamental designs illustrate that certain design aspects are not functional. Such distinctions may be helpful if the USPTO raises a functionality-related rejection during design patent prosecution. However, caution must be taken before disclaiming functionality of certain design features because an applicant could be hampering efforts to claim such design features as functional components in future utility applications.

Potential Pitfalls and Alternative Strategies

The inclusion of all known alternative designs in an omnibus application is not, however, without risk. If not eventually claimed in an issued utility or design patent, any subject matter disclosed in the omnibus application will be dedicated to the public. Thus, if an omnibus application ' or its progeny ' is issued or published, a design included in a company's omnibus application could be used as prior art against that company's future designs that do not claim priority to the omnibus application. This risk persists even if the design in the omnibus application has been altered, since the USPTO may reject a new design as an 'obvious variant' of a prior art design.

While the omnibus filing strategy may efficiently serve a company's IP objectives, employing the strategy is ill-advised if a company is seriously considering seeking international design protection. Because the Patent Cooperation Treaty (PCT) does not cover industrial design rights (that is, foreign design patent equivalents), a PCT application typically cannot be relied upon to provide priority for any foreign design rights. (See, e.g., MPEP '1501. But see id. at '1504.20 (A U.S. 'design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.').) Further, although the Paris Convention gives design patent application filers six months to file foreign design applications, it does not grant a right to rely on a utility filing for design priority. (See, e.g., OHIM Examination Guidelines, Community Design '10.1 (2008).)

A company that has alternative ornamental designs for a new product could also file an omnibus design application. Such an omnibus design application would disclose various alternative designs and may serve as a priority document for foreign design patent filings under the Paris Convention. There are, however, two drawbacks of this approach. First, it offers no protection to functional aspects of a new product line. Second, the pendency of design patent applications is typically much shorter than the pendency of utility applications. Unless an applicant maintains the pendency of an omnibus design patent application (or its progeny) by filing divisional applications before the initial application (and its progeny) is issued or abandoned, this may reduce the benefits of the omnibus application strategy.

If, however, a company has global interests in design and utility IP protection, it may consider filing a U.S. omnibus utility application (including both functional and design disclosures) and filing a seemingly-redundant U.S. omnibus design application (i.e., with the same design disclosures) on the same day. Through this technique, an applicant can address the interplay between functional and ornamental inventive features, while preserving foreign priority for both utility and design features. Moreover, because identical design figures would be included in each of the concurrently filed omnibus applications, the costs associated with preparing and filing the omnibus design application would be relatively modest.

Finally, prospective omnibus application filers should steer clear of provisional patent applications when design patents may be desired. While confidential and much cheaper than nonprovisional filings, a provisional application cannot serve as priority document for a design patent application ' even indirectly. 35 U.S.C. '172. That is, if a design patent application claims priority to a nonprovisional utility patent application, which, in turn, claims priority to a provisional application, the design application's priority date is the date that the nonprovisional application was filed.

Conclusion

The omnibus application strategy works best when a company seeks to protect functional and ornamental inventive aspects of a new product. When carefully employed, it can enable companies to maximize preservation of U.S. patent rights while delaying substantial IP costs until they are justified by market realities.'

Christopher P. Foley is a Partner with Finnegan, Henderson, Farabow, Garrett & Dunner, in Reston, VA. He can be reached at 571-205-2720 or [email protected]. Elizabeth D. Ferrill and Larry M. Sandell are Associates with the firm in the Washington, DC, office. They can be reached at 202-408-4445; [email protected] and 202-408-4000; larry.[email protected], respectively.

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