As previously reported, the USPTO published on February 6, 2014, a Request for Comments on the Written Description Requirements for Design Applications.  The Request followed a heated discussion during Design Day 2013 when USPTO Design Practice Specialist, Mr. Joel Sincavage gave specific examples illustrating an original design claim and an amended design claim where, in the amended claim, only a subset of elements of the original disclosure were shown using solid lines.

The USPTO seemed to take the position that, in these “rare situations,” the inventor may not have had possession of the newly claimed design because the claimed subset of elements was “seemingly unrelated” to the original design.  Some members of the public attending Design Day raised concerns regarding the Office’s position. 

In response to these concerns, the USPTO issued the Request for “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.” In its Request, the Office proposed the following factors to “only be applied by design examiners in the rare situation where there is a question as to whether an amended/continuation design claim satisfies the written description requirement:

(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.”

A round-table was held by the Office on March 5, 2014, during which most members of the public voiced their opposition to the proposed guidelines and factors.  Criticisms included the non-compliance of the proposed guidelines with judicial precedent, the uncertainty created by the factors, and the potential loss of flexibility for all applicants while addressing “rare situations” where an applicant might be trying to game the system.

The window for comments closed on March 14, 2014.  Of note, The IPO and the AIPLA submitted comments strongly opposing the new guidelines and factors.

In its comments, the IPO advocates the status quo, relying on the 1989 en banc Federal Circuit decision in Racing Stroller.  In this case, the Court applied a simple visual test for determining compliance with the written description requirement.  If the claimed design is “depicted” in the earlier drawings, then the requirement is met. 

Nevertheless, the IPO considered a rule change to address the USPTO’s hypothetical checkered board scheme, where the original drawing is a grid of squares shown in solid lines and the amendments consist of selections of some of the squares forming designs such as a cross, an X, etc.  The IPO proposed the following test to address this rare and academic situation, which seems to concern the Office so much:

An amended design patent claim may not have written description support in the original disclosure when a designer of ordinary skill would not recognize any relationship between the claimed design and the original disclosure.

Of interest, the IPO proposal ties the test to a designer of ordinary skill in the art.  This connection should allow applicants to submit expert declarations in support of their position that the amendments are supported by the original disclosure.

The AIPLA also opposes the USPTO’s proposed factors.  The AIPLA points to the uncertainty created by these new factors and their inconsistent application by the Office.  The increase in the size and cost of preparing design applications as a result of this uncertainty is another stated reason for opposing the USPTO proposal. The AIPLA thus “urges the Office to adopt the following Examination guideline as an alternative to the factors suggested in the Request:

an amended claim that does not add subject matter to the original disclosure or remove subject matter claimed in the original disclosure satisfies the written description requirement unless the amended claim introduces a claimed element not “reasonably discernible” from the original disclosure.”

The AIPLA adds explanations regarding the meaning of adding and removing subject matter when changing solid lines to broken lines.  The Association also emphasizes several concerns about each of the factors proposed by the USPTO.

So, where do we go from here? 

The USPTO has agreed to review the comments submitted and may issue another Federal Register notice relating to the written restriction requirement.  In the meantime, Design Day 2014 will be here next week, and we may hear more on this topic from the USPTO on this occasion.  We will attend this annual event and report its highlights here on our blog.