Design Patents and Provisional Applications

Sometimes when an emerging company brings a new consumer product to market, they have limited funds for IP. While some strategies may utilize both design and utility applications, there may be cases where a choice must be made. While in some instances a provisional application (if well done) can be a good choice, design patents cannot claim priority to a provisional and thus if not filed early can later be barred by prior publication or sales.

However, a utility application can, in certain cases, claim priority to a design application as in the famous Vascath double lumen catheter case (see the image below).  


As such, in some cases where a design patent can be more strategically beneficial, but yet one wants to keep the option open for a later utility application, there can be ways to "stack" the design patent filing to maximize the ability for a later utility filing.  For example, multiple embodiments can be filed, including CAD models and photographs, along with the usual design drawings. Further, extra sets of drawings with break lines strategically placed around the product can be used to enable later continuation design filings that focus on only subsets of the product design (see previous post on this strategy).  While some of these embodiments will eventually need to be canceled, that can occur at a later time when perhaps there is a better idea of competitor activity and available budget for further filings.