The Written Description Requirement In US Design Patent Prosecution: Background And Recent Developments

Author:Mr Richard Stockton
Profession:Banner & Witcoff
 
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Introduction

On February 6, 2014, the United States Patent and Trademark Office ("USPTO") announced a roundtable to solicit public opinions regarding the written description requirement ("WDR") as applied to US design patent applications ("DPAs") in "rare" situations ("Roundtable").1 The USPTO scheduled the Roundtable for the afternoon of March 5, and also requested written comments (due March 14).

The Roundtable responds what many design patent practitioners perceive as an unannounced shift to a heightened WDR standard for DPAs. This white paper introduces the WDR for DPAs, summarizes recent developments (including the Roundtable) and then assesses next steps.

The WDR for DPAs

The legal basis for a WDR rejection is 35 U.S.C. § 112(a). Most DPA WDR rejections arise from (1) amending DPA claim scope (e.g., converting solid "claimed" lines to broken "unclaimed" lines) and/or (2) claiming priority to an earlier application (e.g., under 35 U.S.C. §§ 119 or 120). Here is an example of (1), amending claim scope in a DPA:

In the context of (2), claiming priority, a recent Federal Circuit case summarized DPA WDR law as follows:

The test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as 'whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' Ariad Pharm., Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (en banc). In the context of design patents, the drawings provide the written description of the invention. In re Daniels, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Klein, 26 USPQ2d 1133 (Fed. Cir. 1993) ("[U]sual[ly] in design applications, there is no description other than the drawings."). Thus, when an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application. Daniels, 46 USPQ2d at 1789; see also Vas-Cath Inc. v. Mahurkar, 19 USPQ2d 1111 (Fed. Cir. 1991).2

A key DPA WDR issue is what "reasonably conveys" means, and therefore the extent of options to modify design patent claim scope from an initial disclosure.

WDR rejections are one of two significant species of DPA rejections under 35 U.S.C. § 112.3 The other species, non-enablement/indefiniteness under 35 U.S.C. § 112(a) and (b), typically arises from (1) unclear figures, such as when detail is too muddy or pixelated, or (2) figures in which the parameters of the detail cannot be discerned. Here is an example of (2):

Assuming arguendo that the figure above is the full disclosure in the DPA, and that the three lines within the circle on the top surface correspond to shading (a common convention) to depict a hole in the cube, the DPA may be rejected as non-enabled/indefinite because the depth of the hole is not discernible. The WDR comes into play by limiting the responses available to overcome the non-enablement/indefiniteness rejection by amending the figures. Here, for example, if the applicant tried to overcome the rejection by, e.g., adding a second figure showing different perspective and the depth of the hole, a WDR rejection would likely result:

Thus, the WDR is very significant in DPAs because the majority of USPTO rejections are 112 rejections, and the WDR is directly or indirectly involved in most 112 rejections. Empirically, in an informal survey of the file histories of 1049 issued design patents, Professor Dennis Crouch found that 75% of all DPA rejections were 112 rejections (compared to 7% for rejections under 35 U.S.C. §§ 102 and 103)...

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