Thursday, February 6, 2014

USTPO Design Patent Roundtable: Request for Comments on the Written Description Requirement For Designs


The United States Patent and Trademark Office is hosting a roundtable event to solicit public opinions regarding the written description requirement as applied to design applications in certain limited situations (Ostensibly the circumstances addressed in In re Owens). Members of the public are invited to participate. The roundtable will provide a forum for an informal discussion of the topics identified in this notice. Written comments in response to these topics have also been requested. Here is a link to the PTO’s request for comments for the full details.

What is noteworthy in the invitation is the Patent Office’s “initial impression … that generic boilerplate statements would not adequately reflect what the designer had in his or her possession at the time of filing the application” to meet the written description requirement for later amendments or continuations. The PTO seems to be suggesting that it will require a significant level of detail in any verbal written description submitted in a design application to lend support for design embodiments not expressly disclosed in the drawings.

If you wish to participate:

WHEN: March 5, 2014, beginning at 1:00 p.m. Eastern Daylight Time (EDT), and ending at 4:00 p.m. EDT. Written comments must be received on or before March 14, 2014 to ensure consideration.

WHERE: Madison Auditorium on the concourse level of the Madison Building, which is located at 600 Dulany Street, Alexandria, Virginia 22314

HOW: Members of the public who wish to participate in the roundtable as a speaker must do so by request in writing no later than February 14, 2014.  Registration on the day of the roundtable is available for observation only.  To register, email DesignRoundtable2014@uspto.gov and provide the following information: (1) Your name, title, and if applicable, company or organization, address, phone number, and email address; (2) whether you wish to attend in person or via Web cast; and (3) if you wish to make an oral presentation at the roundtable, which of the topics identified in section III, below, will be addressed and the approximate desired length of your presentation

WHAT: The Office seeks comments on the application of the written description requirement where only a subset of elements of the original disclosure are shown using solid lines in an amendment or in a continuation application.  Specifically, the Office seeks input on the following topics relating to the written description requirement under 35 U.S.C. 112(a) as applied to design applications in certain limited situations.
(A)  Factors in Determining Whether an Amended/Continuation Design Claim Satisfies the Written Description Requirement: When does “a design [that] includes only a subset of the originally disclosed elements (no new elements are introduced that were not originally disclosed), satisf[y] the written description requirement?” Proposed Factors to discuss:
1.      The presence of a common theme among the subset of elements forming the newly identified design claim, such as a common appearance;
2.      The subset of elements forming the newly identified design claim share an operational and/or visual connection due to the nature of the particular article of manufacture (e.g., set of tail lights of an automobile);
3.      The subset of elements forming the newly identified design claim is a self contained design within the original design;
4.      a fundamental relationship among the subset of elements forming the newly identified design claim is established by the context in which the elements appear;
5.      the subset of elements forming the newly identified design claim gives the same overall impression as the original design claim; and/or
6.      any additional factors, not listed above that would be useful for design patent examiners to consider
(B)  Establishing Adequate Written Description Support in the Original Disclosure: What are the “mechanisms applicants can use to demonstrate that they had possession of designs claimed in future amendments/continuations.” 
1.      A descriptive statement in the originally-filed application (e.g., that specifically identifies different combinations of elements which respectively form additional designs) could be a meaningful way for applicants to demonstrate that they had possession of designs claimed in future amendments/continuation applications.
2.      NOTE - The Office’s initial impression is that generic boilerplate statements would not adequately reflect what the designer had in his or her possession at the time of filing the application.

FOR FURTHER INFORMATION CONTACT:
Registration and speaker presentations request should be directed to the attention of Robert Olszewski, Director, Technology Center 2900, by telephone at 571–272–2200, or by email to mrobert.olszewski@uspto.gov. Requests for additional information regarding the topics for written comments and discussion at the roundtable event should be directed to Nicole Dretar Haines, Senior Legal Advisor, Office of Patent Legal Administration, by telephone at 571–272–7717, or by email to mnicole.haines@uspto.gov.

Submitted comments will be available to the public at http://www.uspto.gov/patents/init_events/index.jsp. For additional detail please refer to the Federal Register /Vol. 79, No. 25 /Thursday, February 6, 2014 /Notices.

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