Patent and Invention Help Forum

Patent and Inventing Discussion => Patent Questions and Advice => Topic started by: LWMDC on May 26, 2019, 11:22:19 PM

Title: Design Patent on an Abandoned Patent
Post by: LWMDC on May 26, 2019, 11:22:19 PM
I have an invention that would likely fail to receive a Utility Patent due to a pre-existing patent.  My invention is significantly different from the existing patent but probably not different enough to warrant a unique Utility Patent.  The pre-existing patent however was abandoned.  Can I get a Design Patent referencing the abandoned patent? 
Thank you
Title: Re: Design Patent on an Abandoned Patent
Post by: Brad on May 27, 2019, 10:24:53 AM
If your product looks different from the original patent and has a new "design" to it then yes you should be able to get your own new design patent approved.   

If it looks the same as the original it will likely be rejected as not being a new design. 
Title: Re: Design Patent on an Abandoned Patent
Post by: LWMDC on June 03, 2019, 07:11:59 PM
If I anticipate not acquiring a unique Utility Patent, but have an invention different enough to obtain a design patent, am I precluded from filing a Provisional Patent in the hopes of getting a unique Utility Patent.  And if so, could I change my mind during the 1 year Provisional Patent period and file the Utility Patent while letting the Provisional Patent lapse.
Title: Re: Design Patent on an Abandoned Patent
Post by: Brad on June 04, 2019, 04:48:52 PM
A provisional application is one type of "utility" patent application so I am not sure I understand your questions.  Read this post on the different type of applications:  https://patentfile.org/what-is-a-provisional-patent-application-for/

If you are asking about starting with a provisional and then switching to a design you can file both but to be safe I would try to file them around the same time so perhaps file the provisional first and then try to file the design a few weeks later.   

Just make sure the focus of the provisional is on functional items not related to the ornamental design as that could also cause potential problems down the road.