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Tag: Patent

Design Patent Drawings

What are design patent drawings and how many are required for Design Patent Applications?

While the USPTO has various rules for drawings that are included for Utility Patent Applications, the rules for Design Patent drawings are especially important to follow. Failure to follow them exactly may require significant expense in justifying modification or even risk the abandonment of your invention.

General Rules on Format

Generally, Design Patent drawings should be drawn as solid black-and-white line drawings with what is known as “proper surface shading”. Importantly, features not intended to be claimed should be unshaded and have dotted lines. For instance, a new mug handle might include a properly shaded and solid line drawing for the handle portion, with dotted and unshaded portions for the cylindrical mug. A thorough guide to drafting compliant drawings is available on the USPTO’s website.

More Specific Formatting Considerations

As mentioned above, surfaces should be shaded. Shading should illustrate the character and contour of the surfaces of any 3D features of the design to be patented. Environmental portions, or those portions not intended to be claimed in the patented design, are not shaded and should be represented with broken or dotted lines.

Some Exceptions

The USPTO does allow black-and-white photographs to be submitted instead of drawings, but only when photographs are the only practicable way to illustrate the invention’s design. See 37 C.F.R. § 1.84(a)(2). Color photos/drawings must be filed along with a petition under the same C.F.R. section. The petition must explain why the inventor must submit color photos/drawings and/or why they are necessary to show the invention. In addition, the applicant must include three sets of the proposed color photos/drawings and the specification section of the application must include the following statement:

The patent or application file contains a least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

How Many Drawings are Required?

The general rule is seven drawings. Essentially, any 3D item would have views in correlation to the sides of a dice – a front, back, left, right, top, and bottom. The seventh drawing is normally a perspective, such as slightly above and to one side, looking down. If an invention is quite symmetrical, an eighth drawing might help ensure there aren’t any issues during examination. Professional patent artists often use techniques that easily convert CAD drawings into each required view, requiring only minor edits. This can significantly reduce this burden on the inventor.

If you want to protect your ornamental design with a Design Patent, it’s important to keep these special rules for Design Patent Applications in mind. Since you’ll need to prepare important documents and proper drawings are crucial to turning your application into a patent, you should consider hiring a patent attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.


Abandoned Patent Applications

Abandoned Patent Applications

Grell & Watson tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find their most recent update below.

Patent Abandonment

Abandoned Patent ApplicationsPatent application abandonment or patent abandonment means that a patent application is no longer pending or a patent is no longer valid, respectively. In the case of issued U.S. patents, this can occur due to failure to pay patent maintenance fees or when a patent owner expressly abandons his or her patent with a written declaration of abandonment. For U.S. patent applications, this generally occurs when, during the pendency of an application, an applicant fails to reply within six (6) months of the mail date of an Office Action from the USPTO patent examiner. Other circumstances of application abandonment include, but are not limited to, failure to pay issue fees after allowance and incomplete replies by applicants who then fail to cure the deficiencies within specified timeframes. Express or written abandonment is also possible, though it is generally reserved for cases where an applicant wishes to prevent the application’s publication.

Sometimes inventors become too busy, life gets in the way, or prosecuting their patent becomes overwhelmingly complicated. If they delay too long in responding to USPTO correspondence, they may unintentionally abandon their application and their invention can enter the public domain. In this article, we cover how abandonment might happen and steps you can take to get your application back on track.

Petitioning to Revive an Abandoned Patent Application – After Two Months

If the holding of abandonment is not being disputed, an abandoned U.S. patent application may be revived only on the basis of unintentional delay. If the delay in reply by applicant was unintentional or unavoidable, a petition to the Director may be filed to revive the application. Under 37 C.F.R. 1.137, the petition requires (i) the reply required to the outstanding Office Action; (ii) the petition fee of $850 for a small entity; (iii) a terminal disclaimer and corresponding fee of $160; and (iv) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. In the case of failing to reply to a Non-Final Office Action, the applicant may file a continuation application which swears priority to the abandoned application instead of its reply to the outstanding Office Action with a continuation application swearing priority to the initial application, in place of (i) the reply required.

While these are the only requirements for filing the petition, the Director of the USPTO may require additional information when there is a question as to whether the entire delay was unintentional. This determination is at the sole discretion of the Director. Should the Director require this additional information, the applicant must then carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unintentional.

This may mean providing reasons, circumstances or excuses for failing to respond along with sufficient written or testamentary evidence corroborating them. Examples might include failure to receive an Office Action and/or a Notice of Abandonment due to change in address or lost mail, failure of an applicant’s representative to communicate the same, the applicant’s physical or mental incapacitation during the period of delay, death of the applicant or a close family relation, or confusion as to the sufficiency of the applicant’s response or the status of its application. Examples do not include the applicant deciding that responding would be too complicated or expensive or otherwise not worthwhile but later changing their mind.

Petitioning to Withdraw the Holding of Abandonment – Within Two Months

In cases where the applicant disputes the USPTO’s determination that the application was abandoned, he or she may petition to withdraw the holding of abandonment. The reasons for petitioning to withdraw the holding of abandonment include (i) non-receipt of USPTO correspondence by an applicant or its representative; (ii) argument that an incomplete response was substantially complete; or (iii) evidence that a reply was timely mailed or filed. In any of these scenarios, 37 C.F.R. 1.181(f) provides that any petition not filed within two (2) months of the Notice of Abandonment may be dismissed as untimely. Therefore, applicants that have been recently notified that their applications have been abandoned, must move quickly to petition the USPTO to withdraw the holding of abandonment.

If you have received a notice of abandonment but still wish to receive a patent for your invention, it may not be too late to fix your mistake. Since you’ll need to prepare important documents and critical dates and evidence are crucial to continuing your application, it may be time to hire a patent attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.

Abandoned Patent Applications

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By Richard Piercy

IP Lawyers:

Ext. 104 – Atlanta I-75 & Downtown – (404) 596-7333