Monday, April 03, 2006

U.S. Design Patent Application Disclosures

35 USC §171 reads:
“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
“The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”

The provisions of title 35 that apply to patents for inventions include those set forth in 35 USC §§ 102 to 112. So, to be patentable a design must be new in both the §102 and §103 sense, and the application must meet the requirements of §112. We all know this.

Section 112-
Section 112 requires the specification to contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most clearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor for carrying out his invention.” We all know that, too.

Current PTO Practice -
But it seems that the PTO does not apply section 112 to design patent applications. The design patent group for decades has not required a design patent application to describe the manner and process for making the article of manufacture incorporating the design, nor to set forth the best mode for carrying out his design. Why not? There is no statutory exception I can find for not applying this part of §112 to design patent applications.
So for decades I have included in the design patent application specifications I prepare a short paragraph describing the manner and process for making it, and for carrying out the invention. Each time such an application has reached the point that it is ready to be allowed, the examiner cancels this paragraph by examiner’s amendment. Which is fine by me. I figure that I have complied with the statutory requirement by including such a paragraph in the application.
Many, or maybe even most every, design patent application does not include a paragraph describing how to make and use the design. I suppose some might argue that such a paragraph is unnecessary for the design that is the subject of the application: how to make and use it will be obvious to those of ordinary skill in the relevant field. But that statute does not include such an exception. Its requirements seem clear. So why take a chance? Include this paragraph in the design patent applications you prepare in the future.

What To Do? -
Might such a paragraph be added to design patent applications now pending before the PTO. MPEP §2163.06 discusses the new matter prohibition of 35 USC §132, observing that “if the content of the amendment is not described in the application as filed,” it will be refused entry as new matter. So, is a description of the manner and process of making the new design, and for carrying out the new design, new matter when added by an amendment? Put differently, might not the design itself, as shown in the drawings of the application as filed, convey to a person skilled in the relevant art how to make and use the same, and how to carry out the invention? I suppose that there might be cases – maybe even a lot of cases – when this is so. But what about the cases when the inventor of the design has some quirk in the manner and process for making it, or for carrying out the design, that is not generally known? In at least such a case I suspect that any resulting design patent will be invalid.
The bottom line – discuss with the inventor of the design how it is made, and whether or not the inventor has any special or preferred way to make it. Also discuss how the inventor carries out the new design, and include a short description of all this in the application when filed. That should prevent any subsequent challenge.
A postscript: this area would seem perfect for a statutory amendment blessing the practice that has been followed for decades at the PTO. (JH)


  • This may not help much but I recall doing some research into the written description requirement in the last year or so and reading (either case law or commentary on case law) that drawings are part of the written description insofar as 112 is concerned.

    I wish I could provide the cite but I cannot recall it. You may want to investigate this further.

    Anyhow, if my recollection is serving me correctly, it would explain why a paragraph describing the embodiments of a design patent is not necessary.

    By Blogger Kurt Leyendecker, Esq., at 8:27 AM  

  • David French writes:

    This is an opportunity for me to use some of my Latin:

    Communis Error facit Jus!

    At least I think that's how the courts would handle an objection to a design patent based upon the absence of a description of how to make the article.

    By Blogger David J. French, at 11:27 AM  

  • Kurt - That's my recollection too. I wrote a paper a while back about design patent appln. disclosures in which I mentioned the method of making and using reqt. The JPTOS never published it (maybe because its editor is in the PTO's design group), but I recall citing such a case. My point in the note was not that the design patent did not include an adequate written description, but that it did not include anything about "the manner and process of making and using it," which I read as a requirement separate from the written description requirement.
    David - To respond to your comment, I think the maxim you cite is used, basically, to justify holding what has been done for years as the proper way to do it. In the original note, I think I acknowledge that the drawing has always been treated by the PTO as a sufficient description of the article of manufacture incorporating the design. But the PTO does not seem to me to ever have applied the requirement that the aplication set forth the "manner and process of making and using" the design. They do not have the authority, I beleve, to waive this statutory requirement. So there is no basis, I suggest, for treating what they have been doing in this area as sufficient, for they have been doing nothing.
    I'd welcome any further thoughts either of you, or anyone else, has about this design patent application requirement. Jim Hawes

    By Blogger maui muse, at 10:40 AM  

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