IP Law Daily, PATENT NEWS: USPTO requests comments on written disclosures in design applications, (Apr 15, 2016)

By Thomas Long, J.D.

The USPTO is seeking public comment regarding a proposed approach for design examiners to apply general principles governing compliance with the written description requirement to specific situations in design patent applications, according to a Federal Register notice.

The USPTO held a roundtable on March 5, 2014, to solicit public opinion regarding the written description requirement of 35 U.S.C. §112(a) as applied to design applications in certain limited situations. Specifically, the USPTO sought comments on the application of the written description requirement to an amended claim or a claim in a continuing design application that includes only a subset of originally disclosed elements (that is, the later-claimed design does not introduce any new elements that were not originally disclosed). In some cases, the USPTO said, the amendment could disclose a new design that an ordinary designer might not have recognized in the original disclosure, raising questions as to the sufficiency of the application’s written description.

After examining the comments gathered at the roundtable, the USPTO concluded that it was necessary to supplement the current provisions in the Manual of Patent Examining Procedure (“MPEP”) relating to 35 U.S.C. §112 for design applications. The USPTO is proposing an approach, under which the examiner would consider what the original/earlier application, in its totality (including the title, any descriptive statements, and the drawings), would have reasonably conveyed to an ordinary designer at the time of the invention, and how an ordinary designer in the art would have designed the article that is the subject of the design claim. If the examiner determines that an ordinary designer would not recognize the later-claimed design in the original/earlier disclosure, the examiner would reject the claim for lack of written description.

The USPTO has asked the public to submit written comments on this proposed approach. The USPTO also is requesting specific examples that the public believes would be helpful to illustrate the proposed approach or any suggested approach for applying the written description requirement in design applications. Comments must be received on or before June 14, 2016, and can be sent by email to: DesignWrittenDescription2016@ uspto.gov.

News: Patent USPTO