Design patent practitioners routinely amend design drawings from solid lines to dashed lines in order to claim a part of the overall design, rather than the entire design. This has occurred for a number of reasons. For example, in order to save up front costs, a practitioner may file a single set of drawings directed toward an entire article, showing all the important aspects of the design in solid lines. Later, after allowance of the initial embodiment, and after enough time has passed to confirm that the design has value, applicants have placed certain features of the claimed design in dashed lines in order to “broaden” the claim of the design patent. In other cases, such as foreign originating applications, Examiners have permitted practitioners to amend design drawings by showing certain features in dashed lines, such as screw holes or other minor features, even though the originally filed drawings showed all the features in solid lines with solid line contours.
This practice of converting solid lines to dashed lines has long been permitted by the US Patent Office and is explicitly exempted from being treated as impermissible new matter in MPEP § 1504.04. At Design Day 2013, the Patent Office announced a change in examination
policy that will have a significant impact on practitioner practices and that could affect thousands of applications that are presently pending.
According to Joel Sincavage, the Design Practice Specialist of Technology Center 2900, the Patent Office has instituted a new examination policy and will no longer routinely permit an applicant to amend solid lines to dashed lines. The Patent Office described the issue as one where the design was “disclosed, but not described.” In particular, citing 35 U.S.C. § 112(a), Specialist Sincavage explained that the Patent Office is now rejecting design applications where an applicant amends solid lines to dashed lines, whether it be as part of an initially filed application, or as part of a continuation application. The reason cited for this is that there is no written description for the design encompassing dashed lines.
MPEP § 1504.04 provides that “[a]n amendment to the disclosure not affecting the claim (such as environment in the title or in broken lines in the drawings), which has no antecedent basis in the application as originally file, must be object to under 35 U.S.C. § 132 as lacking support in the application as originally filed and a requirement must be made to cancel the new matter.” The MPEP further provides that “[t]he scope of a design claim is defined by what is shown in full lines in the applications drawings. . . . The claim may be amended by broadening or narrowing its scope within the bounds of the disclosure as originally filed.”i The MPEP provides an example where removal of three-dimensional surface treatment, such as beading, grooves, or ribs, would not be permitted, but that “an amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration.”ii Thus, the examination policy changes appear to be in direct contradiction to the Patent Office’s previously published examination guidelines.
Mr. Sincavage explained that there may be times that the Patent Office will permit an amendment from solid lines to dashed line, but that these amendments will only be permitted on a case-by-case basis and the applicant will need to make appropriate arguments in order to overcome a written description rejection. Unfortunately, he provided no examples of what an “appropriate” argument would be. The purpose of this article is to set forth some potential solutions for addressing this new examination policy and to provide clients with some cost-effective options.
While cases that are presently pending may not meet these new stringent standards and may face examination issues when an applicant tries to amend the drawings, there are a number of possible steps that a practitioner can take in order to avoid written description rejections for new cases and to provide clients with an opportunity to amend their design drawings after filing. At Design Day 2013, one practitioner suggested filing 100 drawings covering every perceived possible embodiment in the initial application. Unfortunately, this approach may not be cost-effective for most applicants. The author submits that there are a number of possible ways to address this issue without spending a fortune on drawings.
One possible solution is to use language in the initially filed specification that points out what other embodiments are foreseen. The MPEP provides that both the drawing disclosure and any narrative description in the specification are incorporated into the claim by use of the language “as shown and described.”iii The MPEP further provides that “a narrative description in the specification can supplement the drawing disclosure to define the scope of protection sought by the claim.”ivWhile the language will not ultimately be permitted to be present in the issued patent, it can serve as a basis for amendments to cover later alternative embodiments.
For example, the author has previously used language in Design Patent Application No. 29/424,218 (now U.S. Patent No. D675,825) to disclaim the height of one of the parts of a design. The originally filed drawings showed the part in solid lines, but language included in the specification, as filed, stated that “[w]hile the interior walls of the basket are shown as being lower than the top edge of the basket, it should be appreciated that the inner walls may be at the same height as the top edge of the basket or at a different height relative to the top edge of the basket.” An example of the drawings as filed and amended is shown below:
While the Examiner rejected the language in the specification because “[t]he only claim that can be protected in a patent is exactly what is shown in the drawings,” the applicant was permitted to amend the drawings, in view of the language, to disclaim the height of the center divider.
This approach, utilizing language disclaimers, was also discussed with Rob Spear, Supervisory Patent Examiner of Technology Center 2900. Examiner Spear expressed his opinion that such language would be sufficient to overcome a written description rejection if appropriate wording was chosen by the practitioner in advance. Broad, all-encompassing, language would likely not suffice, but specific language pointing out features to be disclaimed in alternative embodiments may be sufficient and would, presumably, provide the practitioner with “case-by-case basis” argumentsv
Another proposed way that applicants may approach the new “disclosed, but not described” policy is to use a secondary set of perspective views with dashed lines to show embodiments that may later be claimed. While a typical primary embodiment includes seven drawing views, namely, the front, rear, left side, right side, top, bottom, and perspective views, support for later amendments may be provided by utilizing one or more additional perspective views showing aspects of the design that may be disclaimed.
In the past, a single additional perspective view has been used as a basis for support for later amendments. When a single additional perspective view is used, the applicant may be successful if wording describing what is claimed or disclaimed in the additional perspective view, along with a reference to the other figures in the primary embodiment, is utilized. For example, the applicant could state “Fig. 8 (additional embodiment) illustrates an alternative perspective view of the apparatus shown in Figs. 1-7, but with Feature X being disclaimed (or with only Feature X being claimed). Claimed aspects of Figs. 1-6 (front, rear, left side, right side, top and bottom views) are incorporated by reference into Figure 8 and any such features shown in dashed lines in Fig. 8 are likewise intended to be shown in dashed lines in alternative Figs. 1-6.”
In addition, in order to further secure all the rights intended, the practitioner may wish to consider adding two additional perspective views for the secondary embodiments to the seven primary views instead of one view. To fully cover all aspects of the design, a front, top perspective view and a rear, bottom perspective view may be necessary in order to cover all of the surfaces of the design. This approach may save costs because it would only require two views for additional embodiments, rather than seven views. Further, additional language in the specification may not be necessary because all the features will be shown in the two perspective views, and will be supported by the seven primary embodiment views. A reference to the primary views, however, is recommended to clarify that the secondary views are intended to encompass features shown in the primary views, to the extent they are not shown in dashed lines in the secondary embodiments.
Another potential benefit to this approach is that an Examiner may determine that one or more of the secondary embodiments are not patentably distinct from the primary embodiment, and the applicant may be able to retain several embodiments in the same application without having to file a divisional application, saving further costs.vi
One other proposed way for applicants to inexpensively deal with the new examination policy would be to utilize a separate set of perspective views, like that described above, but circling (by hand) certain aspects of the design that may later be disclaimed and including language in the specification stating that the various circled parts may be disclaimed in later embodiments. The originally filed perspective view could be used, so no additional drawings would potentially be needed. If features on the rear of the device are also meant to be disclaimed, then a rear perspective view could also be utilized and would only require the preparation of one additional view (the rear, bottom perspective). This approach also may be useful when photographs are utilized, rather than line drawings, since sections can be easily circled to indicate what may later be disclaimed.vii Overall, this proposal would be cost-effective for most clients and provide them with options for later filings.
With respect to language disclaimers for this proposal, the author believes it will not be sufficient to simply state that “the various circled features may be disclaimed in any combination"viii Instead, the practitioner should point out which features may be disclaimed and any possible combination of features that may be disclaimed.
Based upon discussions at Design Day 2013, it’s expected that this area of design patent law will continue to evolve. Many seasoned practitioners were surprised by the change in examining procedure and were adamant that it was an improper change. Practitioners requested round table discussions with the Patent Office to address their concerns. At present, however, the design patent practitioner needs to be diligent in considering future embodiments in advance of the initial filing. Until this issue is clarified by statute or the courts, the design patent practitioner needs to view this matter through the eyes of the Patent Office so that their client’s rights are not lost.