If I file a provisional patent, can I file one or more design patents as needed? 7 Answers as of February 24, 2011

I have filed a provisional patent, but I feel there may be more than one design patent resulting from this work. Can I break the concept up into more than one design patent, as needed. I feel my ideas are more focused on design than utility patents

Ask a Local Attorney. 100% Anonymous. Free Answers.

Free Case Evaluation by a Local Lawyer: Click here
DANIEL NESBITT | Hasse & Nesbitt
If a non-provisional application includes drawings (and in some cases, description) sufficient to support a design, then a design application can later be field claiming priority to the non-provisional application. A provisional application can never be used as a priority for a design application. You can include several embodiments of your design in a single design application, but you may be required by the examiner to prosecute them one at a time via restriction requirements. Consult with a patent attorney on the details.
Answer Applies to: Ohio
Replied: 2/24/2011
Kafantaris Law Group
Kafantaris Law Group | Theo Kafantaris
A utility application can claim priority over the provisional application, but a design application cannot. As such, you would need to file the design patents separately.
Answer Applies to: California
Replied: 2/10/2011
Handal & Morofsky LLC
Handal & Morofsky LLC | Anthony H. Handal
You can file a divisional design patent off a utility patent application provided there is some disclosure that supports the design application. During the one year after filing of a provisional application, you should claim the priority of any provisional filing.
Answer Applies to: New York
Replied: 2/3/2011
Devon & Associates
Devon & Associates | Marcia A. Devon
Yes, depending on what your invention is, you could also file a design patent to protect the ornamental aspects of the invention. Remember to follow all of the pertinent time deadlines.
Answer Applies to: California
Replied: 2/2/2011
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Basically a design patent only covers one embodiment. It has to be directed towards the non functional ornamental features of the invention. IE the shape of the railing ballisters.
Answer Applies to: Oregon
Replied: 2/2/2011
    Michael M. Ahmadshahi
    Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
    Provisional patent applications are reserved for utility patent applications, not design patent applications. This means that if you decide to file a design patent on the drawings you submitted in your provisional application, you must file a separate design patent application and no right of priority can be claimed to the filing date of your provisional patent application. Whether or not there are more than one design in a design patent application depends on

    whether the different embodiments have basically the same design characteristics and that they are patentably distinct. It is best left to the examiner to decide whether or not these conditions are met. If the examiner does decide that there are more than one design in the application, you will be notified by the examiner at which time you can decide if you want to file divisional applications to cover the different designs.
    Answer Applies to: California
    Replied: 2/2/2011
    Malhotra Law Firm, PLLC
    Malhotra Law Firm, PLLC | Deepak Malhotra
    It should be possible, as long as you meet the novelty requirements.
    Answer Applies to: Washington
    Replied: 2/1/2011
Click to View More Answers: