An Overview of Three Common Fixes for US Design Patent Rejections

Are you new to design patent applications and just got a rejection from the US Patent and Trademark Office? This article will go over some common fixes and some potential pitfalls when implementing them.

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Some patent practitioners have little or no experience with design patents, but when a client comes to you in need of patent prosecution help it can be hard to turn them down. Even worse, if the application was already filed and prosecution is underway, it can be difficult to figure out where to start making changes without introducing new matter or causing other problems.

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Those last points about introducing new matter or causing other problems may sound like obvious things to avoid, but there are several idiosyncrasies when it comes to US design patents that might not be apparent to all practitioners. Even seemingly minor things like the title can have a major impact on design patents in unexpected ways.

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One note before we start: design patents can be tricky, even for practitioners who routinely handle patent prosecution. I find that nothing trumps experience when handling design patent matters. If you are less experienced with design patents, you may want to consider running any response by another practitioner who has more experience such as someone in your firm, or co-counsel from another firm.

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With that said, let’s touch on 3 common fixes for design patent application rejections and what they involve, including some problems to watch out for.

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Possible Fix 1: file new, clearer drawings to avoid drawings objections

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Since design patent coverage is defined by the drawings, it is important for the patent office to have clear drawings. As a result, a very common objection for design patent applications is that part or all of the drawings are unclear.

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Lines which are blurry, overlapping, or otherwise hard to see well may serve as the basis for a rejection. This may happen when handmade drawings or screenshots are submitted in the initial filing.

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When this happens, a common fix is to simply file new drawings with clearer lines. This is usually not a problem in terms of introducing new matter. However, there are some obstacles to watch out for.

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The prohibition against adding new subject matter is usually interpreted very strictly in the design patent context. What this means in practice is that any changes to the object(s) shown in the drawings, no matter how small, might be construed as new matter and used to reject the design patent application after new drawings are filed.

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Practitioners looking to file new drawings should be careful to avoid inadvertently adding new matter. When making new drawings, consider whether any of the drawings show the design at an angle which was not shown in the original drawings, or if any new lines are shown in the new drawings. Both of these changes may introduce new matter. Also, new matter may be introduced if relative sizes of lines or other shapes shown in the drawings change.

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If the original drawings were made using a computer aided design (CAD) program, it may be a simple matter to recreate the original views using the CAD files. However, if the design needs to be manually redrawn, there is a higher likelihood that the new drawings might change the design being depicted due simply to human error. When this is the case, it might be worthwhile to closely compare the new drawings to the old ones. Tracing over the old drawing with the new drawing might reveal discrepancies between the drawings that could be considered new matter.

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Possible Fix 2: change solid lines to broken lines to avoid 112 rejections

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Broken or dashed lines in design patents typically represent features which the applicant wishes to depict for context but not claim as part of the design. Often, broken lines are used to show environmental features that may be used with the claimed design.

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An example from the USPTO’s design drawings guidance is a jewelry cabinet with a unique floral pattern. In some versions of that design, the pattern by itself is claimed by showing the pattern in solid lines and depicting a jewelry cabinet in broken lines. A design patent application like this effectively claims the pattern as applied to any jewelry cabinet, not necessarily a jewelry cabinet that looks like the one shown in the drawings.

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When addressing 112 rejections for lack of clarity in design patents, changing solid lines to broken lines can be used to fix issues with failure to show sufficient details about certain parts of the design. A frequent issue I see in design patent applications is depicting a hole without showing the inner features of the hole such that the three-dimensional shape of the whole cannot be fully ascertained just from looking at the drawings.

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Adding new views showing a hole at different angles is likely to add new matter and therefore might not be an option for fixing a 112 rejection. Instead, practitioners can avoid 112 rejections for lack of clarity with respect to certain features by changing solid lines showing those features to broken lines, thereby disclaiming those features such that full disclosure of the entire 3D shape may not be necessary.

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Possible Fix 3: change the title to avoid prior art

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This is a possible fix you could make, but has several implications that you might want to carefully consider first. Per cases such as In re Surgisil, the title in a design patent application affects the scope of the resulting patent. In other words, a design patent titled “art tool” with the same exact drawings as a design patent titled simply “tool” may not be infringed by a tool which is not an art tool.

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Likewise, during prosecution, the universe of applicable prior art may be limited based on the title of the design. ?What this means is that prior art can be avoided if the design patent title limits the design to a different article of manufacture than that of a potential prior art design, even if the design otherwise looks identical.

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Given the above, one might be tempted to simply change the title to avoid prior art. However, pursuant to cases such as In re Curver, changes to a title in a design patent application can create prosecution history estoppel which could end up limiting your client’s options for establishing infringement later.

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In other words, by changing the title to narrow the scope of the design patent application, an applicant may be estopped from later arguing that the patent is infringed by a design in a different category.

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Examiners may suggest title changes simply for expediency purposes, but providing your client with enough information to give informed consent may require walking them through some possible infringement scenarios to see if they are okay with potentially limiting the coverage. It might be worth considering the kinds of items your client and their competitors sell to determine an appropriate title change that avoids the prior art while capturing as much potentially infringing activity as possible.

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Having reviewed several possible fixes and pitfalls, there is one other thing you may want to consider in case you are ever unsure whether certain changes might introduce new matter. In that case,, it could be worth talking to the patent examiner.

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In my experience, design patent examiners are often very helpful with suggesting fixes that will allow them to grant the patent, and some examiners are even willing to take a look at your new drawings before you file a response in order to give you an idea whether the new drawings are likely to be accepted.

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Just note that any proposed drawings can be properly made of record (so don’t include any drafts you wouldn’t want in public records), and that an informal review of the new drawings does not guarantee that your new drawings will ultimately be accepted.

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If you have any #patentprotips for overcoming design patent application rejections, please feel free to add a comment below. Others patent professionals’ insights and tips are always appreciated!

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*Note: this article is not legal advice and does not form an attorney-client relationship. This article reflects the author’s personal opinions and not those of his employer.

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#patents #patentprosecution #PatentProTips #designpatents

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? Ryan McCormick 2023