Monday, April 18, 2016

USPTO Requests Comments on Proposed Written Description Guidance for Design Patents

The United States Patent and Trademark Office has issued a Request for Comments on its proposed guidance to patent examiners regarding the written description requirement in Section 112 of the Patent Act with respect to design patents.  The proposed guidance would address situations where an amended or continuing application claims only a subset of the elements disclosed in an earlier or original application.  In other words, in the example below, if the original claim comprised the images on the left, can the amended claim cover only the subset of elements shown in solid lines on the right?

Most practitioners when seeing the case above, would say the amended claim clearly meets the written description requirement (or that it is entitled to claim priority to the earlier-filed claim, in the case of a continuing application).  A reasonable person would likely understand that the inventor had "possession" of the design in the amended claim at the time the original claim was filed.  

The Patent Office agrees that in most cases the answer would be clear.  However, it recognizes that in some situations, the original claim may not be enough to disclose and describe the amended claim.  Take one example provided by the American Intellectual Property Law Association in response to a previous request for comments in 2014:

Here, though the original hypothetical claim discloses a 10 x 10 grid comprised of broken lines, it is difficult to imagine that the inventor has possession of any or every design utilizing some or all of those lines, such as the amended drawing to the right.  

The question from the Patent Office is, where do you draw the line, so to speak, between those examples?

In 2014, when the Patent Office first sought comments on this issue, they proposed a multi-factor test that examiners could apply to determine if a new claim met the written description requirement based on an earlier disclosure, including:
  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; and/or 
  5. the subset of elements forming the newly identified design claim gives the same overall impression as the original design claim.
The Patent Office abandoned this approach after reviewing the public comments.  In its place, the current proposal attempts to focus on the language and intent behind recent Federal Circuit opinions regarding the written description requirement, including In re Owens, 710 F.3d 1362 (Fed. Cir. 2013), and In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998). We previously covered Owens and its interpretation of Daniels when we reported on that case in 2013. In short, examiners would be instructed to:
determine whether an ordinary designer would recognize upon reviewing the complete original/earlier application that the inventor had possession of the later-claimed design in the original/earlier disclosure. . . . When making this determination, the examiner would consider what the original/earlier application, in its totality (e.g., 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.
This more holistic approach to the written description question may avoid the pitfalls and unintended consequences of a more formalistic, factor-based approach.  But it remains to be seen whether these instruction would provide examiners with meaningful guidance when interpreting amended or continuing design patent claims.

This is where our readership can help.  The Patent Office is seeking public comments on its proposed approach.  Perhaps more importantly, it is seeking 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.  They would like to see:
examples from the public that demonstrate adequate written description as well as examples that demonstrate a lack of written description. Additionally, examples of situations in which the presence or lack of written description is not readily apparent, i.e., examples that are close to the line between adequate written description and insufficient written description, would be most helpful.
It is hard to overstate how important these examples could be in shaping the future examination of design patent applications.   In 2014, after the Supreme Court's opinion in Alice Corp. v. CLS Bank, 135 S.Ct. 2347 (2014), the Patent Office issued similar guidance and examples for determining whether claims were patent-ineligible because they were directed to an abstract idea.  Patent prosecutors reported that examiners tended to rely heavily on these examples in support of rejections of patent applications under Section 101.

Better examples make for better examinations.  To that end, if you have any experience you would like to share with the Patent Office on this matter, feel free to direct your comments to  And if you care to, share them with us as well in the comments below.

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