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Timing of Filing Design and Provisional Patent Applications

Filing Design and Provisional Patent Applications 

Inventors wishing to file utility patents often secure a priority date by first filing Provisional Patent applications. These applications focus squarely on what the inventor has documented, and don’t require some of the formalities of a Non-Provisional Patent application. Since Provisional Patent applications aren’t examined, this means an inventor can file an application and receive a priority date for their patent without the need for an oath or declaration, an Information Disclosure Statement (IDS), and other formal application requirements. As long as the inventor files a Non-Provisional Patent application within 1 year of their Provisional filing, swearing priority to the Provisional Patent application, intervening publications cannot be cited as prior art against the inventor’s application.

Filing Design and Provisional Patent Applications – US

Under 35 U.S.C. § 172, however, only Non-Provisional utility patent applications may swear priority to an earlier filed Provisional Patent application. Therefore, if ornamental design is a prominent feature of an invention, the provisional filing date may not be used as a placeholder for priority. So if both useful features and ornamental design aspects of an invention are important to the overall marketing and proprietary features of it, inventors should consider filing a design patent application in addition to filing a Provisional Patent Application. This can be done either simultaneously or by filing a Design Application soon after the filing of a Provisional Patent Application. That way, the ornamental features can receive a level of patent protection and share its priority date with respect to products sold or publications by others when it comes time for the USPTO to examine each application. Otherwise, products released or publications by others, and even the inventor’s own publications or sales, may become novelty defeating prior art against the inventor’s design application and the inventor may risk not being able to protect their ornamental features.

Filing Design and Provisional Patent Applications – Foreign

Design and Provisional Patent ApplicationsOne other consideration must be taken into account in regard to foreign applicants wishing to protect their ornamental designs within the US. Under the same section of patent law, 35 U.S.C. § 172, foreign applicants claiming priority in a US Design Patent Application to a foreign application, must file their application within six-months of filing their foreign application for the same design in order to use their foreign priority date in their US application. This shortened time period for international applicants means they should take special care regarding these deadlines if ornamental features are being protected.

If you have a useful invention that also features a unique ornamental design, it’s important to keep these special design patent rules in mind. Since you’ll need to prepare important documents and critical dates are crucial to turning your application into a patent, you should consider hiring a patent attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.

Need help with Design and Provisional Patent Applications

Call Patent Attorney Mat Grell at  (678) 202-5990.  Email

CLE – Patent Prosecution: Broadest Reasonable Interpretation When Drafting Claims

The Federal Circuit has issued several decisions that clarify how the broadest reasonable interpretation (BRI) standard should be applied in patent application prosecution. The rulings underscore the importance of using the ordinary and customary meaning of claim terms consistent with the specification and drawings. Further, the court seems to stress patent disclosure (via a patent search) when determining how broad of an interpretation is reasonable. Continue reading

CLE Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection

Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection” scheduled for Thursday, November 10, 1:00pm-2:30pm EST.

The Supreme Court’s decision in Alice implemented a two-step test, the first of which focuses on abstractness. Since Alice, the Federal Circuit has issued decisions that provide guidance on determining whether a claim is directed to an abstract idea. The Enfish, BASCOM, DDR Holdings, Rapid Litigation and McRO rulings help bring clarity to the Alice test.

In DDR Holdings and BASCOM, the Federal Circuit discussed a problem-solution approach to finding patent eligibility, despite abstractness. In Enfish and McRO, the Court emphasized the Specification’s teachings vis-à-vis the prior art. These cases provide guidance on how to successfully navigate the post-Alice minefield of 35 U.S.C. § 101 abstractness rejections in the absence of a clear guideline on what is considered abstract.

Our panel will examine recent Federal Circuit decisions on patent eligibility for software. The panel will discuss the Court’s different approaches and offer best practices for demonstrating patent eligibility.

We will review these and other key issues:

  • How are the courts applying the framework for patent eligibility created in Alice?
  • What guidance can be gleaned from the Federal Circuit’s decisions in Enfish, BASCOM, DDR Holdings, Rapid Litigation and McRo?
  • What are best practices for patent counsel to avoid patent-eligibility issues?

After our presentations, we will engage in a live question and answer session with participants so we can answer your questions about these important issues directly.

I hope you’ll join us.

For more information or to register >

Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More


By definition, design patents protect ornamental designs. The standard for determining whether a design or design feature is ornamental—and what effect that determination has—remains unsettled. Unlike utility patents, design patent applications are not published when the applicant files directly with the USPTO. Further, the application’s prosecution history is not publicly available until the application issues unless it is a divisional or continuation application. Consequently, less information is available about design patent applications until the applications issue.

Counsel must find the proper balance when claiming designs. Applicants will often use portion claiming techniques, which helps protect the innovative portions of a design while making it more difficult to “design around” the patent. However, it may also make it harder to get the patent because it is more susceptible to the prior art.

In light of recent design patent decisions, including the Federal Circuit’s decision in Sport Dimension (2016), counsel should consider filing applications with multiple embodiments or filing multiple applications for a design concept with different degrees of scope.

The panel will review these and other key questions:

  • What key considerations should counsel keep in mind in design patent drafting?
  • What steps should counsel to patent owners take to factor out functional aspects during claim construction?
  • What guidance can be drawn from recent court decisions for design patent claim construction?

Patent Attorney Cobb County

Are you looking for a Patent Attorney in Marietta?

Marietta Patent Attorney

We have detailed personal experience to guide you form the point of conception of your idea, to the most cost effective means of protecting your idea, to bringing your invention to fruition whether you are planning to manufacture and distribute yourself or whether you plan to license the intellectual property of this invention in return for a royalty. We have developed relationships with infomercial companies, retailers, large niche distributors, and web platform or ecommerce developers to assist you in getting a return on your invention investment. I am an electrical engineer, patent attorney and former general counsel for a telecom start-up here in Georgia.

BG IP Law specializes in Intellectual Property Law, including Patents, Trademarks, Copyrights, Business Contracts, Licensing, Entity Formation (LLC, S-Corp.), Internet Law and related IP Matters. B&G IP Law is a group of experienced Patent Attorneys with intellectual property, corporate & business transaction experience from Atlanta’s top law firms, in-house corporate law departments or both. Our fee arrangements are flexible whether based on standard hourly rate, flat fee, per project, or as temporary assistance to General Counsel on per day, week, or longer term commitments. Call our office for a FREE initial consultation with Patent Attorney Georgia.

Call now to for a FREE consultation with Mat Grell in Georgia.

(678) 383-4886

Balser & Grell IP Law, LLC, 3330 Cumberland Blvd, Suite 500, Atlanta, Georgia 30339 (678) 383-4886

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Patent Law Overview- IP Boot Camp

Patent Law Overview- IP Boot Camp

Rivka D. Monheit, Pabst Patent Group LLP, has put together a terrific set of topics and speakers for this program.

Topics include:

• Copyright 101:  What you should know about Copyright Law
• Introduction to Trademark in Sports
• Patent Law Overview
• The Dirty Dozen:  The Mistakes most commonly made by Patent Attorneys and how to avoid them

Make your plans now to attend the IP Boot Camp. This section sponsored event will be Oct. 17, at the Georgia Institute of Technology, Technology Square Research Building in Atlanta. The seminar chair,

Inventor Information

Inventor Information

With every invention idea you need an Invention Process to step each idea through to test the feasability, marketability, and protectability of your invention.

How to Evaluate your New Idea Invention

Follow these simple Invention Help steps to evaluate any  idea invention:
1. Complete a Recording of your Invention Ideas (i.e., document your ideas invention in writing)

2. Evaluate and document all possible alternate embodiments, useful materials, substitute components, and means of engineering around your idea.

3. Perform a thorough Patent Search/screemeing & Evaluation the protectability of your new invention idea. Perform a patent screening using your invention keywords.

4. Perform Product Research – Search the internet and trade publications for your product terms. For example, type in “toilet air filter” if that is the descriptive terms of your product as well as any relevant combinations of this term.

5. Valuate or estimate your inventions Commercial Viability and the market size.

6. Gather detailed contact information of all inventors and assignees (companiies) listed on any relevant patent or patent application found during your patent search

7. If you feel you must diclose your ideas to a third party prior to filing a patent application then disclose under a confidentiality agreement or non disclosure agreement (NDA Agreement).

8. Find a patent attorney

9. Schedule a meeting with your patent attorney (or teleconference)

10. Make copies of all documents (ROI, PS, Mkt./RS, pictures, and prior art) and prototypes

Inventor Start Kit™ a digital download of Inventor Assistance which teaches these steps and much more.

Within this website and blog posts you will find inventor help and inventor information and printable materials for those with inventions, ideas, and other intellectual property. Please click the categories to the right, such as Invention Assistance to learn more.

Inventor Start Kit – Invention help for your new idea invention

To help protect your new idea invention we offer several downloadable invention help products that include everything you need to protect your invention ideas.

Inventor Start Kit™

Inventor Start Kit™ is a digital download invention kit of easy to follow inventor information documents including inventor information & invention help, instructions, actual inventor kit samples, and your own ready to use invention kit forms for recording your ideas invention for your own safe keeping, evaluating the protect ability and marketability of your invention ideas or logo, performing patent search & trademark searches on your ideas, and market research relating to your new invention idea.

Inventor Start Kit™

Invention Confidentiality Agreement (NDA Agreement)

To help protect your new idea invention we offer several downloadable invention help products that include everything you need to protect your invention ideas.

Invention Confidentiality Agreement (NDA Agreement)

Invention Non Disclosure Agreement (NDA form) is a digital download of easy to follow NDA agreement documents including a confidentiality agreement, invention help information & inventor help instructions regarding disclosure of your invention, an actual NDA Agreement, and your own ready to use NDA Form to protect the disclosure of your new idea invention, information, description and drawings (confidential information).

Invention Non Disclosure Agreement (NDA form)