PTO MAJOR DESIGN PATENT RULE CHANGES
Published in 62 Federal Register 53132 (1997).
Effective Date of Rule Changes: December 1, 1997.
The rule changes are available on the PTO web site: http://www.uspto.gov -- , in a publication titled: Training and Implementation Guide . They can be read in a html version or PDF file form. Government Printing Office web site has the Federal Register publication without the Guide, and it is necessary to enter the search phrase "patent and trademark office rules" to find the Rule Change Publication.
The proposed rule changes were published in 61 Federal Register 49819 (1996). Comments on the proposed rules were reviewed by the PTO and evaluated in the final rule publication.
In the Federal Register and Guide publications the PTO evaluation of the proposed rule comments appear first, followed by the rule changes.
A short article on the rule changes was published by Hiram H. Bernstein & Robert W. Bahr, Major Changes to Patent Rules, 79 Journal of the Patent and Trademark Office Society 677-690 (1997), but it does not discuss the design patent application changes in detail.
The rules changes are extensive and many of them effect all type of patents. The ones discussed in this document have special significance to design patents.
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SUMMARY OF CHANGES:
1. Drawing shading use is now on a case-by-case basis, where needed, instead of mandatory as required in the prior rule.
2. Color drawings and photos can be used now, but there are cautions to consider;
3. Informal reproductions can be used, with photos or drawings, and there is flexibility to identify what is claimed. They must be prepared very carefully;
4. Broken line use remains a key technique for preparing an effective design patent disclosure and claim;
5. Design patent applications that have a design disclosure and claim will receive a filing date. The rule change eliminates the requirement to name the inventor for a filing date, allowing a petition to add that information;
6. The application format suggested is to include in the preamble a brief description of the nature and intended use of the design, to help evaluation and classification; and
7. The rules now state, in conformance with the statute, a design for an article is claimed. The disclosure requirements, including shading, can be more flexible for the product disclosure with this principle clarified..
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SHADING
The PTO liberalized its drawing shading rules, yielding to pressure from the U.S. bar and international circles.
The prior rule required shading on each drawing to show contour. This made it necessary to prepare at least part of most drawings by hand to add shading. It prevented regular use of Computer Aided Design machines to prepare a complete design patent drawing.
The new rules state that shading should be used when appropriate. The PTO has been taking a case by case review of the need for shading even before this rule change.
Shading should be used whenever it is not clear what a shape is, e.g., whether concave or convex, if that feature is important to the claimed design. Failure to use shading may be corrected if the shape is generally clear from the filed drawing. On the other hand, the omission of shading that leaves a design unclear cannot be corrected by adding shading, as that change would be new matter. See topic below: DESIGN FOR AN ARTICLE IS CLAIMED.
The new regulation on shading states:
§ 1.152 Design drawings.
* * * (1) Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to present the color black as well as color contrast. 62 Federal Register 53195 (1997).
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COLOR DRAWINGS AND PHOTOS
Many national patent offices permit use of photos as the official reproductions in a design patent application. The regulations on the Hague Agreement Concerning the International Deposit of Industrial Designs (Industrial Design Treaty) permit use of black and white and color photos. The PTO changed its rules a few years ago, to allow petitions to accept black and white photos as the formal reproductions, but use of colored drawings and photos were denied. A petition had to be filed, so the PTO could check the photo qualify. Black and white photos were accepted, usually, clear and capable of being use to make the necessary published pictures.
The rule change allows petitions for using color drawings and color photos. There are some serious cautions to consider before using them. The petition fee will be $130 (§ 1.17, 62 Federal Register 53182 (1997)
Cost aspect is one consideration in using color drawings or photos. Many Industrial Design Treaty registrations now use color, even at the higher cost, so there appears to be recognition that protection of a truer representation of the design visual impact is valuable.
The major caution is that under the PTO regulation every feature in a photo is part of the design patent claim. The PTO will not permit any description disclaimer of features or alternation of the photo in the formal reproductions. The same rule has applied to use of black and white photos. What you see is what you protect in a photo, within the usual infringement analysis. With drawings in color there can be features in broken lines, to provide a broader claim. This fact suggests that color drawings may be a better choice in some situations.
The regulations provide for informal drawings when filing a design application, with some flexibility not given to formal reproductions. See below: Use of Photos as Informal Application Reproductions. A question for serious discussion is why text disclaimers and clarifying statements cannot be used regularly for formal drawings, if they work adequate for informal drawing and photo practice. Several countries rely on descriptive statements of the design features, to some degree (UK and Canada), suggesting that the text disclaimer may not be a difficult procedure to use.
The prohibition against using color drawings and photos in the same application is softened by allowing a petition for PTO consideration. The need for combining such formats may not occur very often, but in certain industries, such as textile and fashion it may be appropriate. A product with significant product shape and small detailed features may be disclosed more conveniently, at a lower cost, by showing a photo of the general shape and an ink drawing of the small detail. A container with fabric cover would be an example of a product that might benefit from the coordinated disclosures. As a part of the work on the Industrial Design Treaty revision [insert link to that page], the U.S. is considering a more liberal use of combined drawings and photos in one application
The new rule states:
§ 1.84 Standards for drawings. (a) * * * (b) * * * (I) The fee set forth in § 1.17(I); * * * (b) Photographs - (1) Black and white. Photographs are not ordinarily permitted in utility patent applications. However, the Office will accept photographs in utility patent applications only after the granting of a petition filed under this paragraph which requests that photographs be accepted. Any such petition must include the following: (I) The fee set forth in § 1.17(I); and (ii) Three (3) sets of photographs. Photographs must either be developed on double weight photographic paper of be permanently mounted on bristol board. The photographs must be of sufficient quality so that all detail in the drawings are reproducible in the printed patent. (2) Color. Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied. See paragraph (a)(2) of this section. 62 Federal Register 53190 (1997).
* * *
§ 1.152 Design drawings. (a) The design must be represented by a drawing that complies with the requirements of § 1.84, and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. (2) Color photographs and color drawings are not permitted in design applications in the absence of a grantable petition pursuant to § 1.84(a)(2). 62 Federal Register 53195 (1997).
The comments concerning this rule change, published with the new rule are:
Section 1.152 is also amended to remove the prohibition against color drawings and color photographs in design applications. Section 1.152 is amended to permit the use of color photographs and color drawings in designs applications subject to the petition requirements of § 1.84(a)(2) inasmuch as color may be an integral element of the ornamental design. While pen and ink drawings may be lined for color, a clear showing of the configuration of the design may be obscured by this drafting method. New technologies, such as holographic designs; fireworks and laser light displays may not be accurately disclosed without the use of color.
***
A new § 1.152(b) is added to clarify Office practice concerning details disclosing in the ink drawing, color drawing, or photographs deposited with the original application papers. Specifically, § 1.152(b) provides that any details disclosed in the ink or color drawings, or photographs deposited with the original application papers constitute an integral part of the disclosed and claimed design, except as otherwise provided in § 1.152(b). Section 1.152(b) further specifies that this detail may include color or contrast, graphic or written indicia, including identifying indicia of a proprietary nature (e.g., company logo), surface ornamentation on an article, or any combination thereof. The "but not limited to" phrase in § 1.152(b) clarifies that this list is exemplary, not exhaustive. 62 Federal Register 53164 (1997).
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USE OF PHOTOS AS INFORMAL DESIGN APPLICATION REPRODUCTIONS
The flexibility in using informal drawings or photos is in sharp contrast to the procedure for official reproductions. Informal drawing can be filed with a text disclaimer and/or editing on the photo with explanation of what is claimed.
There are cautions involved in using informal drawings or photos as a quick basis for filing an application. The PTO will compare the informal drawings with the formal ones and only permit the latter to show the summation of the informal photo or drawing design, as edited. An informal reproduction must be prepared very carefully.
The rule change concerning use of informal reproductions states:
§ 1.152 * * * (b) Any detail shown in the ink or color drawings or photographs (formal or informal) deposit with the original application papers constitutes an integral part of the disclosed and claimed design, except as otherwise provided in this paragraph. This detail may include, but is not limited to, color or contrast, graphic or written indicia, including identifying indicia of a proprietary nature surface ornamentation on an article, or any combination thereof. (1) When any detail shown in informal drawings or photographs does not constitute an integral part of the disclosed and claimed design, a specific disclaimer must appear in the original application papers either in the specification or directly on the drawings or photographs. This specific disclaimer in the original application papers will provide antecedent basis for the omission of the disclaimer detail(s) in later-filed drawings or photographs. (2) When informal color drawings or photographs are deposited with the original application papers without a disclaimer pursuant to paragraph (b)(1) of this section, formal color drawings or photographs, or a black and white drawing lined to represent color, will be required. 61 Federal Register 53195 (1995).
The comments associated with this rule change are as follows:
Section 1.152(b)(1) provides that when any detail shown in informal drawings or photographs does not constitute an integral part of the disclosed and claimed design, a specific disclaimer must appear in the original application papers either in the specification or directly on the drawings or photographs. This specific disclaimer in the original application papers will provide antecedent basis for the omission of the disclaimer detail(s) in later-filed drawings or photographs. That is, in the absence of such a disclaimer, later-filed formal or informal drawings not including any detail disclosed in the original drawings will be considered to contain new matter, and will be treated accordingly. See 35 U.S.C.§ 112, para. 1; § 1.121(a)(6). 62 Federal Register 53164 (1997)
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BROKEN LINE USE
The new rules leave intact the procedure for using broken lines to represent product features disclosed and not claimed. In fact, they make it even clearer that the design patent application reproduction has two roles. The disclosure function under 35 U.S.C. § 112, para. 1, for general identification of the product, if needed in a reproduction is one purpose. The other function is to claim the design, the statutory requirement. The product associated with the design can be disclosed or identified. Broken lines are a very effective way to present the product disclosure while not claiming the product features, and also a way to alter claim scope during prosecution.
Present PTO practice allows a change of solid to broken lines, and vice versa, during prosecution, to claim a distinct design and eliminate from the claim the background features.
The rule on broken lines is:
§ 1.152 Design Drawings. * * * (a)(1) * * * Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces which cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. 62 Federal Register 53195 (1997).
For comments on shading see below: DESIGN FOR AN ARTICLE IS CLAIMED.
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DESIGN PATENT APPLICATION FILING DATE
The new rules take a major step to simplified filing requirements and bring U.S. design patent law into agreement with international practice. Before this change, a design patent application would not be able to obtain a filing date if the inventor was not named. The new rule removes this requirement and makes the omission correctable, requiring a petition to submit the inventor's name [§ 1.53(f), 62 Federal Register 53187 (1997) . The petition fee is $50 [§ 1.17, 62 Federal Register 53183 (1997)]. There is no requirement to submit a statement to justify the omission.
Most other countries do not require inventor identification to obtain a filing date. This change was announced at the 7th meeting of experts on revision of the Hague Agreement Concerning the International Deposit of Industrial Designs (Industrial Design Treaty) [link to the HA page], held November 3-7, 1997, at WIPO. It was welcomed strongly by the experts, and evidenced a continuing willingness to adjust the U.S. design patent system, serving both U.S. design owners domestically and internationally. Since the current Industrial Design Treaty does not require inventor identification to obtain a filing date, the change removes one of the difficult interfaces for U.S. adherence to the revised Industrial Design Treaty.
The new rule states:
§ 1.53 Application number, filing date , and completion of application. * * * (b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph ( c ) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75 and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. 62 Federal Register 53186 (1997).
The comments associated with the rule change were:
Section 1.41(a) (and §1.53) is amended to no longer require that a patent be applied for in the name of the actual inventors for an application for patent to be accorded a filing date. *** It will be necessary for the applicant to file a petition under §1.41(a) (and appropriate fee) to name the inventor(s). No explanation (other than that the paper is supplying or changing the name(s) of the inventor(s) ... is required or desired in a petition under §1.41. *** The petition fee is required to cover ... the costs of updating the Office's records for the application.
* * *
In the peculiar situation in which no inventor is named in the original application papers * * * , it will be necessary for the applicant to file a petition under § 1.41(a) (and appropriate fee) to name the inventor(s). No explanation (other than that the paper is supplying or changing the name(s) of the inventor(s) or showing of facts concerning the inventorship, or any delay in naming the inventorship is required or desired in a petition under § 1.41(a). The petition fee is required to cover (or defray in provisional application) the costs of updating the Office's records for the application. Where no inventor(s) is named on filing, the Office requests that an identifying name be submitted for the application. The use of very short identifiers should be avoided to prevent confusion. * * * * 62 Federal Register 53136 (1997).
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DESIGN APPLICATION FORMAT - STATEMENT ABOUT DESIGN INTENDED USE
The new rules codify the current practice, to ask most applicants to describe the nature and intended use of the designs. This statement, for example, would require the applicant for an ornamentation design to identify what products would use the design. The step allows the PTO to focus the novelty search on appropriate subject matter. The new rule suggests that this description be in the application preamble. It is a voluntary request that is aimed at saving the PTO time.
The new rule states:
§ 1.154 Arrangement of application elements. (a) * * * (3) Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied. 62 Federal Register 53196 (1997).
The comments associated with this rule change are:
Section 1.154 * * * It is current practice for design examiners, in appropriate cases, to inquire as to the nature and intended use of the article in which a claimed design is embodied. The submission of such description will allow for a more accurate initial classification, and aid in providing a proper and complete search at the time of the first office action on the merits. In those instances where this feature description is necessary to establish a clear understanding of the article in which the design is embodied, provision of the feature description would help in reducing pendency by eliminating the necessity for time-consuming correspondence. Specifically, requests for information prior to first action would be avoided. Absence an amendment requesting deletion of the description it would be printed on any patent that would issue. 62 Federal Register 53164 (1997).
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DESIGN FOR AN ARTICLE IS CLAIMED
The rules are now clarified concerning what is claimed and disclosed in a design patent. The claim is directed to a design for a product. The product need not be fully disclosed, if the design does not require the disclosure. This change gives the PTO some flexibility in deciding what product features need to be disclosed with shading.
This change is a very important one, as it confirms an appreciation in the PTO that the rules can be more flexible concerning disclosure of a product that is not part of the claimed design. It should help resolve some of the disclosure issues and guide attorneys in providing disclosures and effective claims. See above topic: Broken Line Use.
The comments associated with this change were:
The term "article" of § 1.152(a) is replaced by the term "design" as 35 U.S.C. 171 requires that the claim be directed to the "design for an article" not the article, per se. Therefore, to comply with the requirements of 35 U.S.C. 112, para. 1, it is only necessary that the design as embodied in the article be fully disclosed and not the article itself. The term "must" has been replaced by the term "should" to allow for latitude in the illustration of articles whose configuration may be understood without surface shading. 62 Federal Register 53164 (1997).
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CONCLUSIONS
There is a lot of room for discretion and interpretation on the part of the PTO in applying the new rules, on a case by case basis. The changes simplified certain procedures and clarify some important practice steps and principles. The rules are now more flexible on some points. There is room for further improvement. The PTO international work on the Industrial Design Treaty revision should provide some useful insights on how to improve the design patent system.
The above analysis is a preliminary review of the major rule changes effecting primarily design patents. Comments are welcomed on points that should be added to this review, or on the topics discussed above.
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INDUSTRIAL DESIGN TREATY REVISION
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This page was last update on November 10, 1997.
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