MPEP § 1502 — MPEP § 1502
Current through: 2022-07-01

1502-Definition of a Design 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1500 

 Section 1502 
 

 
 
 
 
 
 1502 Definition of a Design [R-07.2022]

 In a design patent application, the subject matter which is claimed is the
 design embodied in or applied to an article of manufacture (or portion thereof) and
 not the article itself. Ex parte Cady, 1916
 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). “ [35 U.S.C.] 171 refers, not to the
 design of an article, but to the design for an article, and is inclusive of ornamental
 designs of all kinds including surface ornamentation as well as configuration of goods.”
 In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
 

 The design for an article consists of the visual characteristics embodied
 in or applied to an article.
 

 Since a design is manifested in appearance, the subject matter of a design
 patent application may relate to the configuration or shape of an article, to the surface
 ornamentation applied to an article, or to the combination of configuration and surface
 ornamentation.
 

 Design is inseparable from the article to which it is applied and cannot
 exist alone merely as a scheme of surface ornamentation. It must be a definite,
 preconceived thing, capable of reproduction and not merely the chance result of a method.
 See In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed.
 Cir. 2021) (“A design claim is limited to the article of manufacture identified in the
 claim; it does not broadly cover a design in the abstract.”); Curver Luxembourg,
 SARL v. Home Expressions, Inc., 938 F.3d 1334, 1340, 2019 USPQ2d 341902 (Fed.
 Cir. 2019) (noting “that long-standing precedent, unchallenged regulation, and agency
 practice all consistently support the view that design patents are granted only for a
 design applied to an article of manufacture, and not a design per se ”). 
 

 
 1502.01 Distinction Between Design and Utility Patents [R-07.2022]

 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.
 

 While utility and design patents afford legally separate protection,
 the utility and ornamentality of an article may not be easily separable. Articles of
 manufacture may possess both functional and ornamental characteristics.
 

 Some of the more common differences between design and utility patents
 are summarized below:
 

 
 (A) The term of a utility patent on an application filed on or after
 June 8, 1995 is 20 years measured from the U.S. filing date; or if the application
 contains a specific reference to an earlier application under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) , 20 years from the date on which the earliest such
 application was filed, while the term of a design patent is 15 years measured from
 the date of grant, if the design application was filed on or after May 13, 2015
 (or 14 years if filed before May 13, 2015). (See 35 U.S.C.
 173 as amended under section 102 of the Patent Law Treaties
 Implementation Act, 126 Stat. at 1531-32). 
 

 (B) Maintenance fees are required for utility patents (see
 37 CFR
 1.20 ), while no maintenance fees are required for design
 patents.
 

 (C) Design patent applications include only a single claim, while
 utility patent applications can have multiple claims.
 

 (D) Restriction between plural, distinct inventions is discretionary
 on the part of the examiner in utility patent applications (see
 MPEP §
 803 ), while it is mandatory in design patent
 applications (see MPEP § 1504.05 ). 
 

 (E) An international application designating various countries may be
 filed for utility patents under the Patent Cooperation Treaty (PCT), whereas an
 international design application designating various countries may be filed for
 design protection under the Hague Agreement.
 

 See MPEP Chapter
 2900 for international design applications. 
 

 (F) Foreign priority under 35 U.S.C.
 119(a) - (d) can be obtained for the
 filing of utility patent applications up to 1 year after the first filing in any
 country subscribing to the Paris Convention, while this period is only 6 months
 for design patent applications (see 35 U.S.C. 172 ).
 

 (G) Utility patent applications may claim the benefit of a
 provisional application under 35 U.S.C. 119(e) whereas
 design patent applications may not. See 35 U.S.C. 172 and
 37 CFR
 1.78(a)(4) .
 

 (H) A Request for Continued Examination (RCE) under 37 CFR 1.114 
 may only be filed in utility and plant applications filed under 35 U.S.C.
 111(a) on or after June 8, 1995, while RCE is not available
 for design applications (see 37 CFR 1.114(e) ).
 

 (I) Continued prosecution application (CPA) practice under
 37 CFR
 1.53(d) is only available for design applications filed
 under 35 U.S.C. chapter 16 (see 37 CFR 1.53(d)(1) ). 
 

 (J) Utility patent applications filed on or after November 29, 2000
 are subject to application publication under 35 U.S.C. 122(b)(1)(A) ,
 whereas design applications filed under 35 U.S.C. chapter 16 are not subject to
 application publication (see 35 U.S.C. 122(b)(2) ).
 

 
 Other distinctions between design and utility patent practice are
 detailed in this chapter and MPEP Chapter 2900 for international
 design applications. Unless otherwise provided, the rules for applications for utility
 patents are equally applicable to applications for design patents ( 35 U.S.C. 171 and
 37 CFR
 1.151 and 1.1061 ).
 

 

 
 1502.02 Design Patent Practitioner Bar [R-01.2024]

 
 37 CFR 1.4 Nature of correspondence and signature requirements. 

 *****

 
 
 
 (d)(1) Handwritten signature. 
 A design patent practitioner must indicate their design patent
 practitioner status by placing the word “design” (in any format) adjacent
 to their handwritten signature. Each piece of correspondence, except as
 provided in paragraphs (d)(2) through
 (4) ,
 (e) , and (f) of this section,
 filed in an application, patent file, or other proceeding in the Office
 that requires a person’s signature, must:
 

 
 

 
 *****

 
 
 
 (2) S-signature. 

 
 
 *****

 (ii) A patent practitioner
 ( § 1.32(a)(1) ),
 signing pursuant to § 1.33(b)(1) or
 (2) , must
 supply their registration number either as part of the S-signature
 or immediately below or adjacent to the S-signature. The hash (#)
 character may only be used as part of the S-signature when
 appearing before a practitioner’s registration number; otherwise,
 the hash character may not be used in an S-signature. A design
 patent practitioner must additionally indicate their design patent
 practitioner status by placing the word “design” (in any format)
 adjacent to the last forward slash of their S-signature.
 

 
 

 
 

 
 *****

 

 
 37 CFR 1.32 Power of attorney. 

 
 (a) Definitions. 
 (1) Patent practitioner 
 means a registered patent attorney or registered patent agent under §
 11.6 . An attorney or agent registered under §
 11.6(d) may only act
 as a practitioner in design patent applications or other design patent
 matters or design patent proceedings.
 

 
 

 
 *****

 

 Effective January 2, 2024, the USPTO created a separate
 design patent practitioner bar whereby admitted design patent practitioners would
 practice in design patent proceedings only. See Representation of Others in
 Design Patent Matters Before the United States Patent and Trademark Office ,
 88 FR 78644 (November 16, 2023). Expanding the admission criteria of the patent bar
 encourages broader participation and keeps up with the ever-evolving technology and
 related teachings that qualify someone to practice before the USPTO.
 

 Design patent practitioners (attorneys and agents) have
 to pass the same registration exam and moral character evaluation as required for all
 patent practitioners, which ensures they have the requisite knowledge of Office rules,
 policies, and procedures. However, the scientific and technical requirements for
 admission as a design patent practitioner have been modified. Specifically, applicants
 to the design patent practitioner bar should have a bachelor’s, master’s, or doctorate
 of philosophy degree in any of the following areas from an accredited college or
 university: industrial design, product design, architecture, applied arts, graphic
 design, fine/studio arts, or art teacher education, or a degree equivalent to one of
 these listed degrees. See the Office of Enrollment and Discipline webpage at
 www.uspto.gov/about-us/organizational-offices/
 office-general-counsel/office-enrollment-and- discipline-oed for more
 information. Design patent practitioners, like all patent practitioners, are required to
 provide competent representation to their clients. This includes properly informing
 their clients of practice limitations. See 37 CFR 11.101 .
 

 Design patent practitioners are registered under
 37 CFR
 11.6(d) and can only practice in design patent matters.
 37 CFR
 1.32(a)(1) . Therefore, a design patent practitioner cannot sign
 papers in a utility (including provisional) or plant application. A patent practitioner
 who is registered to practice in all patent matters under 37 CFR
 11.6(a) - (c) can sign papers in a design
 application. In other words, all patent practitioners can practice in design patent
 matters, but only patent practitioners that can practice in all patent matters can
 practice in utility, plant, and design patent matters. A power of attorney naming the
 practitioners associated with a customer number filed in an application may only include
 practitioners who are authorized to practice in that application. If a design patent
 practitioner is associated with a customer number, that customer number cannot be used
 to establish power of attorney in a utility or plant application. This applies even if a
 practitioner that is authorized to practice before the Office in all patent matters is
 also associated with that same customer number. See MPEP §§ 402 ,
 subsection II and 403 , subsection I. A listing of registered patent attorneys
 and agents (including design patent attorneys and agents) is available at www.uspto.gov/FindPatentAttorney . Interested parties may also obtain
 a list of registered patent practitioners located in their area by writing to the Office
 of Enrollment and Discipline (OED) at Mail Stop OED, Director of the U.S. Patent and
 Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. The Office cannot aid in
 selecting a patent practitioner. See 37 CFR 1.31 and
 MPEP §
 401 .
 

 In addition to the signature requirements for patent
 practitioners registered under 37 CFR 11.6(a) - (c) , design patent
 practitioners must indicate their design patent practitioner status in order to avoid
 public confusion and make the record clear. For handwritten signatures, a design patent
 practitioner must place the word “design” (in any format) adjacent to their signature
 ( 37 CFR
 1.4(d)(1) ), and for S-signatures, a design patent practitioner
 must place the word “design” (in any format) adjacent to the last forward slash of their
 S-signature ( 37 CFR
 1.4(d)(2)(ii) ).
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1501-Statutes and Rules Applicable 

 1502-Definition of a Design 
 1502.01-Distinction Between Design and Utility Patents 

 1502.02-Design Patent Practitioner Bar 

 
 

 1503-Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16 
 1503.01-Specification 

 1503.02-Drawing 

 
 

 1504-Examination 
 1504.01-Statutory Subject Matter for Designs 
 1504.01(a)-Computer-Generated Electronic Images 

 1504.01(b)-Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article 

 1504.01(c)-Lack of Ornamentality 

 1504.01(d)-Simulation 

 1504.01(e)-Offensive Subject Matter 

 
 

 1504.02-Novelty 

 1504.03-Nonobviousness 

 1504.04-Considerations Under 35 U.S.C. 112 

 1504.05-Restriction 

 1504.06-Double Patenting 

 1504.07 - 1504.09-[Reserved] 

 1504.10-Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) 

 1504.11-1504.19-[Reserved] 

 1504.20-Benefit Under 35 U.S.C. 120 

 1504.21-1504.29-[Reserved] 

 1504.30-Expedited Examination 

 
 

 1505-Term of Design Patent 

 1506-1508-[Reserved] 

 1509-Reissue of a Design Patent 

 1510-Reexamination 

 1511-Protest 

 1512-Relationship Between Design Patent, Copyright, and Trademark 

 1513-Miscellaneous 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:27