Mitchell Law PLLC

Can a Design Patent Application have Multiple Embodiments?

Yes, design patent applications can have multiple embodiments. Like utility patent applications, the USPTO allows inventors to disclose multiple embodiments of an invention in a single U.S. design patent application, provided that the embodiments are non-distinct. But, just because you can, does not mean you should!

The benefits of including more than one embodiment are straightforward: the saving of USPTO filing fees for more than one application and potential legal fees in the filings thereof.

The disadvantages to multi-embodiment applications can be great. The primary risk to applications with more than one embodiment are the chance that the Patent Examiner will find that the embodiments are non-distinct. That is, simply, that the embodiments are too dissimilar to be included in a single invention. If this happens, the Examiner will issue a Restriction Requirement Office Action, which will require you to choose (or argue why the restriction is inappropriate), one of the inventions. The other applications are removed from the application, but can be claimed later by filing a divisional application (if filed during the pendency of the parent patent application).

If divisional applications are not filed to claim the unelected embodiments, there is a great chance that you are effectively ceding those embodiments to the public including your competitors, as happened to Pacific Coast Marine Windshields Limited, a patent holder who did not file divisional applications after responding to a restriction requirement.

While it may seem cost-effective to squeeze many embodiments into a single design patent application, the long-term costs are most often too great in many situations, but not all!

If you have any questions about design patent applications, design patent restriction requirements, or office actions requiring restriction please contact us.

If you are interested in filing a design patent application, please start with our design patent application filing form. Please feel free to check the ‘pay later’ button before discussing your application with an attorney.

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