Design Patent Checklist: Article of Manufacture, Drawings, Broken Lines, Filing Deadlines, and Infringement Analysis

By Casey Scott McKay · 2025-06-08

This checklist runs a design patent program from the design review that should trigger a filing to the enforcement decision that tests it, with gates at the points that cannot be recovered. It begins with the disclosure-date diary, because there are no design provisionals, foreign priority is six months rather than twelve, and absolute-novelty jurisdictions are lost on the day the appearance is first shown. It specifies the drawing brief line by line, the broken-line decisions that constitute claim scope, and the continuation family that is the actual protection strategy rather than a refinement of it. It covers prosecution after LKQ, the ornamentality file built from rejected design alternatives and audited marketing copy, and the ordinary observer and article-of-manufacture analyses that decide infringement and damages. It closes with the annual review and the one line that changes filing behavior.

IP and Technology > Patent Counseling Transactions | Checklist | Published 8 June 2025 - Updated 18 August 2025 | Casey Scott McKay - marksy.us

Summary. This checklist runs a design patent program from the design review that should trigger a filing to the enforcement decision that tests it, with gates at the points that cannot be recovered. It begins with the disclosure-date diary, because there are no design provisionals, foreign priority is six months rather than twelve, and absolute-novelty jurisdictions are lost on the day the appearance is first shown. It specifies the drawing brief line by line, the broken-line decisions that constitute claim scope, and the continuation family that is the actual protection strategy rather than a refinement of it. It covers prosecution after LKQ, the ornamentality file built from rejected design alternatives and audited marketing copy, and the ordinary observer and article-of-manufacture analyses that decide infringement and damages. It closes with the annual review and the one line that changes filing behavior.

Keywords: design harvesting trigger · disclosure date diary · no design provisional · six month foreign priority · drawing brief · view requirements · surface shading consistency · broken line scope · continuation family · pending chain · short description · analogous art response · motivation to modify · objective indicia declaration · ornamentality file · ordinary observer comparison · crowded field · article of manufacture factors · total profits proof · annual portfolio review

How to use this checklist

| Phase | What it covers | |---|---| | 1 | The harvesting trigger | | 2 | The disclosure-date diary | | 3 | Structural constraints | | 4 | The drawing brief | | 5 | Views and shading | | 6 | Broken-line scope | | 7 | Title and short description | | 8 | The continuation family | | 9 | Keeping the chain alive | | 10 | Foreign filing decisions | | 11 | Utility coordination | | 12 | Prosecuting after LKQ | | 13 | Objective indicia | | 14 | Drawing amendments | | 15 | The ornamentality file | | 16 | Pre-suit analysis | | 17 | The article of manufacture | | 18 | Litigation posture | | 19 | Defending | | 20 | Settlement structures | | 21 | Special subject matter | | 22 | Annual portfolio review |

Boxes marked [Gate] must clear before the appearance is shown outside the company, or before an application is filed.

The matter. A consumer audio company discovered, eleven months after a trade press preview, that it had thirty-one days of grace period left, no foreign rights, no provisional available, and a competitor already shipping the same grille pattern.

Phase 1. The harvesting trigger

[ ] [Gate] Put the trigger in the design review, not the legal intake.
- Why. The moment a design is selected from alternatives is the moment the ornamentality evidence exists, because the rejected alternatives prove the design was not dictated by function.
[ ] Capture the selected design as rendered, from the source files with a revision identifier.
[ ] [Gate] Preserve the rejected alternatives. They are discarded within weeks and they are the strongest evidence available in a later functionality fight.
[ ] Record a one-line rationale for the choice, phrased in terms of appearance rather than performance.
[ ] Ask the design lead: "If a competitor copied one visual element of this product, which would it be?" That answer is the first continuation.
[ ] Set a filing budget per product line, not per application, so a family is one decision rather than five chances to say no.

Phase 2. The disclosure-date diary

[ ] [Gate] Get the first public showing date from marketing, in writing, before any filing decision.
[ ] Count every category of disclosure: trade show, press pack, retailer preview, analyst briefing, regulatory filing, packaging mockup, app store listing, beta build, and any rendering in coverage.
[ ] Diary the one-year domestic grace period under 35 U.S.C. § 102(b), and alarm it at nine months.
[ ] Treat foreign rights as ending on the disclosure date.
- Trap. Absolute-novelty jurisdictions are gone that day, grace period or not.
[ ] Re-confirm the date at each product milestone, because launch calendars move earlier more often than later.

Phase 3. Structural constraints

[ ] [Gate] There are no design provisionals. 35 U.S.C. § 111(b) does not reach designs, so there is no cheap placeholder.
[ ] [Gate] Foreign priority is six months under 35 U.S.C. § 172, not the twelve months utility practice conditions everyone to expect.
[ ] The term is fifteen years from grant under 35 U.S.C. § 173, with no maintenance fees.
[ ] One claim per patent, in the prescribed form under 37 C.F.R. § 1.153.
[ ] Consider a utility application as an anchor, since a design application may claim priority to a utility application disclosing the design under 35 U.S.C. § 120.
[ ] Consider expedited examination where a competitor is already in market.

Phase 4. The drawing brief

[ ] [Gate] Write the brief. It is the claim.
[ ] Identify the source files and revision, so the drawings match the shipped product rather than an earlier iteration.
- Trap. Products change between design freeze and production, and a patent drawn to the pre-production version claims something nobody sells.
[ ] Choose a broad, generic title.
- Why. A narrow title invites a narrow reading of the article of manufacture, which matters under 35 U.S.C. § 289 and Samsung Electronics v. Apple.
[ ] List exclusions explicitly — branding, logos, model numbers, port labels, regulatory marks.
- Trap. These sit in the source files and, drawn in solid lines, become limitations a competitor avoids with a different logo.
[ ] Specify boundary treatment where a claimed portion has no natural edge.
[ ] Set a review protocol: counsel against the brief, industrial designer against the product, both signing off. The designer catches proportion errors, and a proportion error is a scope error.

Phase 5. Views and shading

[ ] Include front, rear, top, bottom, both sides, and at least one perspective.
[ ] Omit a view only for a flat, unornamented surface, with a statement in the description saying so.
[ ] [Gate] Use surface shading consistently across every view within an application.
- Why. Inconsistency between figures is the most common formal rejection and the easiest to avoid.
[ ] Prefer line drawings to photographs.
- Trap. Photographs claim whatever happened to be in the frame.
[ ] Comply with the formal requirements at 37 C.F.R. § 1.152.
[ ] Prepare a comprehensive disclosure, showing more than the parent will claim, because the continuations depend on it and new matter cannot be added later.

Phase 6. Broken-line scope

[ ] [Gate] Decide the broken lines before drafting. Solid lines claim; broken lines are environment.
[ ] Claim the smallest portion that is distinctive and recognizable.
- Why. A patent showing the entire product in solid lines is infringed only by something that looks like the whole product.
[ ] Map the scope per family member before any drawing work begins — whole article, each distinctive element alone, and the intermediate combinations.
[ ] Note the interaction with damages. Narrow solid lines maximize infringement reach and shrink the likely article of manufacture; broad solid lines do the reverse.
[ ] Confirm no functional-only feature is the sole solid-line content, which invites an ornamentality attack.

Phase 7. Title and short description

[ ] Use the required claim form: "The ornamental design for [article], as shown and described."
[ ] State what broken lines represent.
[ ] Disclaim portions where needed.
[ ] State that a surface is unornamented where a view is omitted.
[ ] For a transitional design, explain that the design transitions between the depicted states.
[ ] Keep it short. The description is the only text that does work, and every extra sentence is a potential limitation.

Phase 8. The continuation family

[ ] [Gate] File a family, not a patent.
[ ] Parent: entire article solid. The anchor and the priority date under 35 U.S.C. § 120.
[ ] One continuation per distinctive element, each solid-lining a different feature with everything else broken.
[ ] Intermediate combinations, to catch a competitor who changed one element.
[ ] The design applied to sibling articles in the product line.
[ ] Confirm every continuation is supported by the parent disclosure.
- Trap. An unsupported continuation loses the priority date, which is a real defense.
[ ] Present the arithmetic: a family of six through issuance against one utility patent, with no maintenance fees under 35 U.S.C. § 173.

Phase 9. Keeping the chain alive

[ ] [Gate] Keep at least one continuation pending while the product is on the market.
- Why. It lets a new claim be drafted around a competitor's actual design, supported by the original disclosure and entitled to the parent's date.
[ ] Flag it in the docket. A docketing system built for utility practice does not surface this.
[ ] Review the pending application against competitor products at each portfolio review.
[ ] Let the chain go deliberately once the product is out of market and nobody is copying — a decision, not an omission.

Phase 10. Foreign filing decisions

[ ] [Gate] Decide the foreign list at the same meeting as the domestic family, because the six-month clock under 35 U.S.C. § 172 runs from the domestic priority date.
[ ] Assess the Hague route — one application designating multiple jurisdictions, central renewals.
[ ] Budget drawing rework. Broken-line practice is not universal, and some jurisdictions treat partial designs differently.
[ ] Note which jurisdictions examine substantively and which register without examination.
[ ] Use deferred publication where the launch date is unannounced, since publication is itself a disclosure.
[ ] Check customs recordation availability, which is a materially cheaper enforcement route than litigation and is routinely unused. See the Anticounterfeiting and Border Enforcement Toolkit.

Phase 11. Utility coordination

[ ] [Gate] Read the utility application before filing the design application.
- Why. What a utility filing says about the function of a configuration will be used to attack ornamentality.
[ ] Direct utility claims at the mechanism and the design at the appearance, and confirm they do not describe the same thing.
[ ] Check whether an existing utility filing can anchor a missed priority date under 35 U.S.C. § 120.
[ ] Flag any utility claim to a configuration as a functionality exhibit waiting to be produced.

Phase 12. Prosecuting after LKQ

[ ] [Gate] Stop arguing Rosen-Durling. Both prongs were overruled in LKQ Corp. v. GM Global Technology.
[ ] State the claimed design as an overall visual impression in two or three sentences, not as a feature list.
[ ] Attack the analogous-art premise for the secondary reference. This is now the principal limiting doctrine and the first argument to make.
[ ] Attack motivation to modify, under the Graham v. John Deere framework informed by KSR v. Teleflex. Flexibility is permitted; hindsight assembly is not.
[ ] Attack the resulting overall impression, with a figure showing the hypothetical combination beside the claim.
[ ] Keep responses to four to six pages plus figures.
[ ] Budget an extra office action per application relative to pre-2024 practice.

Phase 13. Objective indicia

[ ] [Gate] Collect copying evidence continuously. Competitor marketing images showing a copied design circulate internally and then disappear.
[ ] Record commercial success tied to the design, distinguishable from advertising spend and from utility.
[ ] Collect industry praise — awards, design press, unsolicited commentary on the appearance.
[ ] Submit by declaration during prosecution, since indicia are part of the Graham analysis and now carry more weight.
[ ] Keep the file current annually, not only when a rejection arrives.

Phase 14. Drawing amendments

[ ] Understand that every drawing amendment is a claim amendment, with the estoppel consequences that implies.
[ ] Converting solid lines to broken narrows the claim and is generally permissible.
[ ] [Gate] Adding matter not in the original disclosure is new matter and is not permissible.
[ ] Amend only if necessary, and prefer argument where the rejection is combinable-reference based.
[ ] Re-check consistency across all views after any amendment.

Phase 15. The ornamentality file

[ ] [Gate] Audit the marketing copy. Advertising touting a shape as engineered for performance is functionality evidence, and it is the most common self-inflicted wound.
[ ] Audit the utility portfolio for claims to the same configuration.
[ ] Preserve the rejected design alternatives, which show the function could be performed equally well by other designs.
[ ] Record the design rationale in appearance terms, contemporaneously.
[ ] Remember the standard: whether the design is dictated by function, not whether it has one. Individual functional elements are simply given less weight in the comparison.
[ ] Refresh annually, because new marketing copy is generated continuously.

Phase 16. Pre-suit analysis

[ ] [Gate] Build the three-way comparison — patent figures, accused product, closest prior art, side by side. This is the case.
[ ] Apply the ordinary observer test from Egyptian Goddess v. Swisa: whether an ordinary observer familiar with the prior art would be deceived into believing the designs are the same.
[ ] Assess field density honestly.
- Why. In a crowded field small differences matter more, and this cuts against the patentee.
[ ] Identify which family member reads best on the accused product. The narrow continuation usually beats the parent.
[ ] Check your own exposure — ornamentality, unconsidered prior art, and a post-grant challenge under 35 U.S.C. § 311, which is a better bet for a challenger after LKQ.
[ ] Watch declaratory judgment exposure before sending a letter, under 28 U.S.C. § 2201.

Phase 17. The article of manufacture

[ ] [Gate] Decide what you will argue the article is, before filing suit. It is the damages case.
[ ] Work the factors: the scope of the design as claimed; the relative prominence of the design within the product; whether the design is conceptually distinct from the product as a whole; and the physical relationship between the design and the rest of the product.
[ ] As patentee, emphasize prominence, consumer perception, integration, and that the design drives the purchase.
[ ] As defendant, emphasize narrow solid lines, separate manufacture, separate part numbers, an aftermarket in the component, and the patentee's own engineering documents treating it as a distinct item.
[ ] Note the tension — a claim cannot be narrow for validity and broad for damages.
[ ] Get cost accounting early in discovery, because the deduction fight is where the number moves.
[ ] Elect deliberately between 35 U.S.C. § 289 total profits and 35 U.S.C. § 284 damages; not both for the same sale.

Phase 18. Litigation posture

[ ] Keep the complaint short — one claim, one picture, one accused product.
[ ] Expect minimal claim construction. Courts generally decline to translate the design into words, following Egyptian Goddess.
[ ] Assess preliminary relief seriously. More realistic here than in utility practice, subject to the crowded-field problem.
[ ] Expect narrower discovery — no claim-scope expert battle, no source code.
[ ] Prepare summary judgment both ways, since plainly dissimilar designs support non-infringement as a matter of law.
[ ] Present visually. Side-by-side figures do more than expert testimony.

Phase 19. Defending

[ ] [Gate] Establish a crowded field. The best defensive move, because it narrows the patent's effective scope without invalidating anything.
[ ] Attack ornamentality with the plaintiff's marketing, utility patents, and the absence of alternatives.
[ ] Attack the article of manufacture to shrink the § 289 base.
[ ] Check the priority chain for continuity and support under 35 U.S.C. § 120.
[ ] Consider a post-grant challenge under 35 U.S.C. § 311.
[ ] Map the whole family before redesigning. Changing one element rarely clears a properly built family.

Phase 20. Settlement structures

[ ] Redesign with a review right, checked against the whole family before launch.
[ ] A phase-out period for existing inventory with a per-unit payment, easy to administer because unit counts are known.
[ ] A design coexistence agreement specifying visual elements each party will not use.
[ ] A licence limited to an article or channel, pairing naturally with the article-of-manufacture analysis.
[ ] Avoid ongoing design approval rights, which are administratively expensive.
[ ] [Gate] Avoid any term describing the design in functional language, which will be quoted back in the next ornamentality fight.

Phase 21. Special subject matter

[ ] Graphical user interfaces. Screen in broken lines, elements solid; icons alone are far broader than screenshots; transitional designs claimed as a sequence with an explanatory description. Timing is worse here, since interfaces leak through beta builds and store listings.
[ ] Packaging and containers. Strong candidates — copied constantly, alternatives always exist, and the article is naturally the package rather than the goods.
[ ] Surface ornamentation on fabric or materials, alongside copyright in the pattern itself.
[ ] Component and replacement parts. The most contested area and the LKQ fact pattern; expect scrutiny where the part must match to function.
[ ] Vehicles and large equipment, where the article-of-manufacture question is unusually consequential.
[ ] Typefaces, patentable as applied to an article and rarely used.

Phase 22. Annual portfolio review

[ ] [Gate] Confirm a continuation is pending for every product still on the market.
[ ] Map the family against the current product, since products change after launch.
[ ] Map the family against competitors' current products, which is where a pending continuation earns its cost.
[ ] Review disclosure dates for products in development.
[ ] Refresh the ornamentality file against new marketing copy.
[ ] Collect the year's copying evidence.
[ ] Report the cost comparison — a design family through issuance against one utility patent plus twenty years of maintenance fees under 35 U.S.C. § 41. See the Patent Portfolio Management Toolkit.

Phase 23. The drawing brief, as a form

Fill this in and hand it to the draftsperson. It is the deliverable that constitutes claim scope.

| Field | Entry | |---|---| | Article title (broad, generic) | | | Source file and revision | | | Product stage (design freeze / production) | | | First public showing date, confirmed by | | | Views required | Front, rear, top, bottom, left, right, perspective | | Views omitted, and why | | | Shading convention | | | Elements to exclude entirely | Logos, model numbers, port labels, regulatory marks | | Boundary treatment for partial claims | | | Application A solid-line scope | Entire article | | Application B solid-line scope | | | Application C solid-line scope | | | Application D solid-line scope | | | Application E solid-line scope | | | Continuation to remain pending | | | Short description statements | Broken-line meaning; unornamented surfaces; transitional statement | | Counsel reviewer / date | | | Industrial designer reviewer / date | |

[ ] [Gate] Both reviewers sign before filing. The designer catches proportion errors nobody else will, and a proportion error is a scope error.
[ ] Attach the rejected design alternatives to the same file, since they are the ornamentality evidence and this is the only moment they exist in one place.

Phase 24. Model response outline

For a post-LKQ obviousness rejection combining a primary and a secondary reference.

[ ] 1. State the claimed design as an overall visual impression in two or three sentences — proportion, dominant features, and their relationship. Not a feature list, which invites element-by-element combination.
[ ] 2. Address the primary reference. It need not be "basically the same" after LKQ Corp. v. GM Global Technology, but it must be something a designer of ordinary skill would have started from. Show the two side by side where the impressions differ materially.
[ ] 3. Attack the analogous-art premise for the secondary reference — identify the field of endeavor, identify the reference's field, and explain why a designer would not have consulted it. This is the strongest argument available.
[ ] 4. Attack motivation. The examiner must say why a designer would have modified the primary reference in the way proposed. KSR v. Teleflex permits flexible reasoning, not hindsight assembly.
[ ] 5. Attack the resulting overall impression, with a figure showing the hypothetical combination beside the claim. Usually the most persuasive page in the response.
[ ] 6. Submit objective indicia by declaration under Graham v. John Deere — commercial success tied to the design, industry praise, and copying.
[ ] 7. Amend only if necessary, remembering that converting solid lines to broken narrows the claim permanently.
[ ] Keep to four to six pages plus figures.

Phase 25. Evidence request, written in advance

Draft once so it can be sent unchanged when enforcement begins or a challenge arrives.

[ ] The complete drawing set and prosecution history for every family member, with the priority chain documented.
[ ] The design brief and rejected alternatives for the ornamentality file.
[ ] Marketing copy describing the product's appearance, across the relevant period, with any functional characterizations flagged.
[ ] Every utility application and patent claiming any part of the same configuration.
[ ] The disclosure-date record — first showing, channel, and date, with the supporting material.
[ ] Commercial success data attributable to the design rather than to advertising or utility.
[ ] Copying evidence — competitor images, internal correspondence noting the similarity, customer confusion reports.
[ ] The accused product, in physical form, and its cost accounting.
[ ] Component-level manufacturing and sourcing records, which decide the article-of-manufacture argument.
[ ] Prior art searched and not cited, since it bears on both scope and validity.
[ ] Foreign registrations and their status, including customs recordations.

Why this belongs in the checklist. The ornamentality file and the disclosure-date record do not exist at most companies, and both are assembled far more cheaply during an annual review than during discovery — where the marketing copy will be found by the other side either way.

Phase 26. Product-type boxes

Run the base checklist, then the boxes for the product in play.

Consumer hardware.

[ ] Trade show and press preview dates are the disclosure triggers; get them from marketing at design freeze.
[ ] Ports, labels, and regulatory marks must be excluded from solid lines.
[ ] Colorways ship after launch; consider whether the family should include a color-claimed member or whether color belongs to trade dress.
[ ] Retail packaging is a separate filing opportunity and a separate article of manufacture.

Software interfaces.

[ ] Screen in broken lines, elements solid; icons alone are broader than screenshots.
[ ] Transitional designs claimed as a figure sequence with an explanatory statement.
[ ] The disclosure trigger is a beta build, a store listing, or a screenshot in a blog post — all months before launch.
[ ] Coordinate with any utility application claiming the same interaction, which will be used on functionality.

Apparel, textiles, and housewares.

[ ] Crowded fields; the Egyptian Goddess v. Swisa analysis does most of the work in both directions.
[ ] Surface patterns support both a design patent and a copyright registration; file both, since the analyses are independent.
[ ] Seasonal ranges argue for filing families per range rather than per item.

Automotive and equipment.

[ ] The Samsung Electronics v. Apple article-of-manufacture question is unusually consequential because product value is large and claimed portions are small.
[ ] Replacement and repair parts draw scrutiny, and are the LKQ Corp. v. GM Global Technology fact pattern.
[ ] Aftermarket existence is a defendant's strongest article-of-manufacture argument; know it before filing suit.

Medical devices and regulated products.

[ ] Regulatory filings are disclosures; check submission dates against the grace period under 35 U.S.C. § 102(b).
[ ] Utility patents on the same housing are near-certain, so the coordination in Phase 11 is mandatory rather than advisable.
[ ] Human factors documentation frequently characterizes shapes as functional; audit it before filing.

Packaging and containers.

[ ] Strong candidates: copied constantly, alternatives always exist, and ornamentality is easy to establish.
[ ] The article is naturally the package rather than the goods, which caps the damages base — understand that before setting expectations.

Phase 27. The ninety-day program

[ ] Days 1-10. Harvest from the current design review. Obtain disclosure dates for every product in development. Diary grace periods and alarm at nine months.
[ ] Days 11-20. Write the drawing brief for the highest-value product, including the family scope map.
[ ] Days 21-35. Drawings prepared and reviewed by counsel and the industrial designer. Parent filed.
[ ] Days 30-45. Continuations filed from the same set. One designated to remain pending.
[ ] Days 40-50. Foreign filing decision made within the six-month window under 35 U.S.C. § 172, with drawing rework budgeted.
[ ] Days 45-60. Ornamentality file assembled — rejected alternatives, marketing audit, utility portfolio cross-check.
[ ] Days 60-75. Docket configured to flag pending-continuation status, which a utility-oriented docket does not surface.
[ ] Days 75-85. Design review process amended to include the harvesting trigger and the disclosure-date question as standing items.
[ ] Days 86-90. Portfolio review slide prepared with the cost comparison — design family through issuance against one utility patent plus maintenance fees under 35 U.S.C. § 41.

What is deliberately deferred. Filing families for legacy products already disclosed more than a year ago, where the domestic grace period has run and nothing can be recovered. Note them, and move on.

Phase 28. Diligence questions

For an acquisition, a financing, or an in-licence. Ask for artifacts, not assurances.

[ ] Produce the family map for each significant product — which patents, which solid-line scope, and whether any continuation remains pending.
[ ] Produce the priority chain documentation. Continuity gaps and continuations unsupported by the parent disclosure under 35 U.S.C. § 120 are real defenses and they are invisible on a patent list.
[ ] Produce the disclosure-date record for each product, and reconcile against the filing dates.
[ ] Produce the ornamentality file — rejected alternatives and marketing audit. Its absence is a valuation issue, because the functionality attack will be built from the target's own materials.
[ ] Produce every utility patent claiming the same configuration, and read the claims against the design drawings.
[ ] Identify foreign registrations, their status, and any customs recordations.
[ ] Identify post-grant challenges filed or threatened, noting that LKQ Corp. v. GM Global Technology improved a challenger's prospects.
[ ] Assess the article-of-manufacture exposure for each asserted or assertable patent, since the damages story under 35 U.S.C. § 289 is what the portfolio is worth.
[ ] Confirm whether the drawings match the shipped product, which is the single most common latent defect and cannot be fixed after the fact.

Then price two things. The cost of rebuilding the ornamentality file and the disclosure record, which is people-time. And the coverage gap where products were disclosed before filing and the grace period has run, which is unrecoverable and should be reflected in the valuation rather than in a covenant.

Phase 29. Quarterly metrics

Six numbers, tracked across the program.

[ ] Products launched in the quarter with a design family filed before first disclosure, as a proportion of all launches. Target: all of them. This is the metric that matters most, because the failure it measures is unrecoverable.
[ ] Products on market with at least one continuation pending. Target: all significant lines.
[ ] Median days from design selection to parent filing. A number above ninety means the trigger is not in the design review.
[ ] Applications with a complete ornamentality file — rejected alternatives preserved and marketing audited.
[ ] Post-LKQ rejections received and the disposition of each, tracking whether analogous-art arguments are succeeding for this portfolio's subject matter.
[ ] Copying instances logged in the quarter, since objective indicia now carry more weight and the evidence disappears if nobody saves it.

Report alongside the utility numbers, not separately. The comparison is the argument: a design family costs a fraction of a utility patent, issues faster, has no maintenance fees under 35 U.S.C. § 173, and carries a remedy under 35 U.S.C. § 289 with no analogue in utility law. Put both lines on the same page once and the filing program builds itself.

Phase 30. The one-page brief for the product organization

Give this to product and design once a year. It does more than any memo.

[ ] A design patent covers what the product looks like, not what it does. A competitor with a different mechanism still infringes.
[ ] The drawings are the claim, and broken lines decide how broad it is. Which is why counsel needs to see the design before the draftsperson does.
[ ] There is no provisional, and foreign rights end the day we show it. Tell legal the first showing date at design freeze, not at launch.
[ ] We file a family, not a patent, because each patent gets one claim.
[ ] A family costs a fraction of one utility patent and has no maintenance fees.
[ ] Keep the alternatives you rejected. They prove the design was a choice rather than a requirement, and they are the evidence we will need if anyone argues the shape was dictated by function.
[ ] If they copy it, the remedy is their total profit on the relevant article, not a royalty. Which is why the cheapest filing in the portfolio is frequently the one that ends the dispute.

Outcome. With thirty-one days left in the grace period, a parent and four continuations were filed in three weeks from one comprehensive drawing set — whole speaker; grille pattern alone; silhouette alone; control ring alone; and silhouette plus grille — with one continuation kept pending. Foreign rights had already been lost to a trade press preview eleven months earlier, which nobody had recognized as a legal event. Two applications drew post-LKQ obviousness rejections, both overcome by attacking the analogous-art premise and by a declaration on commercial success and copying, the copying exhibit being a competitor marketing image that had been sitting in a shared folder. The grille-pattern patent read directly on the competitor's product notwithstanding its different silhouette, and there was no substantial claim construction dispute. The damages fight was entirely about whether the article of manufacture was the speaker or the grille assembly, and it settled before resolution. The five-patent family through issuance cost materially less than one of the two utility patents that turned out to be irrelevant.

Key Authorities at a Glance

| Authority | Proposition | |---|---| | 35 U.S.C. § 171 | Ornamental design for an article of manufacture | | 35 U.S.C. § 172 | Six-month foreign priority | | 35 U.S.C. § 173 | Fifteen-year term; no maintenance fees | | 35 U.S.C. § 289 | Total profits remedy | | 35 U.S.C. § 284 | Alternative damages measure | | 35 U.S.C. § 102 | Novelty; grace period | | 35 U.S.C. § 103 | Obviousness applied to designs | | 35 U.S.C. § 111 | No design provisionals | | 35 U.S.C. § 112 | Enablement and definiteness via drawings | | 35 U.S.C. § 119 | Foreign priority generally | | 35 U.S.C. § 120 | Continuations and priority chains | | 35 U.S.C. § 41 | Utility maintenance fees, for comparison | | 35 U.S.C. § 271 | Infringing acts | | 35 U.S.C. § 311 | Post-grant challenge | | 28 U.S.C. § 2201 | Declaratory judgment exposure | | 37 C.F.R. § 1.152 | Drawing requirements | | 37 C.F.R. § 1.153 | Title, description, single claim | | Egyptian Goddess v. Swisa | Ordinary observer; prior art as context | | Gorham v. White | Origin of the ordinary observer test | | LKQ Corp. v. GM Global Technology | Flexible obviousness for designs | | Graham v. John Deere | The framework now applied | | KSR v. Teleflex | Flexibility in combining references | | Samsung Electronics v. Apple | Article of manufacture may be a component | | 15 U.S.C. § 1125 | Trade dress, the parallel regime | | 17 U.S.C. § 101 | Separability for useful articles |

The five things people get wrong

Missing the disclosure date. There is no design provisional under 35 U.S.C. § 111(b), foreign priority is six months rather than twelve, and absolute-novelty jurisdictions are lost on the day the appearance is first shown — which is usually a rendering in a press pack that nobody treated as a legal event.

Claiming the whole product in solid lines. The drawings are the claim and broken lines are the scope decision. A patent showing everything in solid lines is infringed only by something that looks like the whole product, which is the easiest thing in the world to design around.

Filing one patent instead of a family. Each patent gets one claim. Protection comes from a chain of continuations at several levels of generality, all supported by one disclosure, with at least one kept pending while the product sells.

Letting the marketing copy make the design functional. The functionality evidence in almost every design case comes from the patentee's own advertising and its own utility patents, and nobody reads either before filing.

Deciding the article of manufacture after filing suit. Under 35 U.S.C. § 289 and Samsung Electronics v. Apple, whether the article is the product or a component is the whole damages case, and the answer is largely determined by choices made in the drawing brief years earlier.