Of primary importance in a design patent application is the drawing disclosure, which illustrates the design being claimed. Unlike a utility application, where the “claim” describes the invention in a lengthy written explanation, the claim in a design patent application protects the overall visual appearance of the design, “described” in the drawings. It is essential that the applicant present a set of drawings (or photographs) of the highest quality which conform to the rules and standards which are reproduced in this guide. Changes to these drawings after the application has been filed, may introduce new matter which is not permitted by law (35 U.S.C. 132). It is in applicant’s best interest to ensure that the drawing disclosure is clear and complete prior to filing the application, since an incomplete or poorly prepared drawing may result in a fatally defective disclosure which cannot become a patent. It is recommended that applicant retain the services of a professional draftsperson who specializes in preparing design patent drawings. Examples of acceptable drawings and drawing disclosures are included in this Guide so that applicant will have some idea of what is required and can prepare the drawings accordingly.

In addition to the drawing disclosure, certain other information is necessary. While no specific format is required, it is strongly suggested that applicant follow the formats presented to ensure that the application is complete.

When a complete design patent application, along with the appropriate filing fee, is received by the Patent and Trademark Office, it is assigned an Application Number and a Filing Date. A “Filing Receipt” containing this information is sent to the applicant. The application is then assigned to an examiner. Applications are examined in order of their filing date.

The actual “examination” entails checking for compliance with formalities, ensuring completeness of the drawing disclosure, and a comparison of the claimed subject matter with the “prior art”. “Prior art” consists of issued patents and published materials. If the claimed subject matter is found to be patentable, the application will be “allowed” and instructions will be provided to applicant for completing the process to permit issuance as a patent.

The examiner may reject the claim in the application if the disclosure cannot be understood or is incomplete, or if a reference or combination of references, found in the prior art, shows the claimed design to be unpatentable. The examiner will then issue an Office action detailing the rejection and addressing the substantive matters which effect patentability. This Office Action may also contain suggestions by the examiner for amendments to the application. Applicant should keep this Office action for his or her files, and not send it back to the Office.

If, after receiving an Office action, applicant elects to continue prosecution of the application, a timely reply to the action must be submitted. This reply should include a request for reconsideration or further examination of the claim, along with any amendments desired by the applicant, and must be made in writing. The reply must distinctly and specifically point out the supposed errors in the Office action and must address every objection and/or rejection in the action. If the examiner has rejected the claim over prior art, a general statement by the applicant that the claim is patentable, without specifically pointing out how the design is patentable over the prior art, does not comply with the rules.

In all cases where the examiner has said that a reply to a requirement is necessary, or where the examiner has indicated patentable subject matter, the reply must comply with the requirements set forth by the examiner, or specifically argue each requirement as to why compliance should not be required.

In any communication with the Office, applicant should include the following items:

1. Application number (checked for accuracy).
2. Group art unit number (copied from filing receipt or most recent Office Action).
3. Filing date.
4. Name of the examiner who prepared the most recent Office action.
5. Title of invention.

It is applicant’s responsibility to make sure that the reply is received by the Office prior to the expiration of the designated time period set for reply. This time period is set to run from the “Date Mailed,” which is indicated on the first page of the Office action. If the reply is not received within the designated time period, the application will be considered abandoned. In the event that applicant is unable to reply within the time period set in the Office action, abandonment may be prevented if a reply is filed within six (6) months from the mail date of the Office action provided a petition for extension of time and the fee set forth in 37 CFR § 1.17(a) are filed. The fee is determined by the amount of time requested, and increases as the length of time increases. These fees are set by Rule and could change at any time. An “Extension of Time” does not have to be obtained prior to the submission of a reply to an Office Action; it may be mailed along with the reply. See insert for a schedule of current fees. Note: an extension of time cannot be obtained when responding to a “Notice of Allowance.”

To ensure that a time period set for reply to an Office Action is not missed, a “Certificate of Mailing” should be attached to the reply. This “Certificate” establishes that the reply is being mailed on a given date. It also establishes that the reply is timely, if it was mailed before the period for reply had expired and if it is mailed with the United States Postal Service. A “Certificate of Mailing” is not the same as “Certified Mail”. A suggested format for a Certificate of Mailing is as follows:

“I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Box Design, Assistant Commissioner for Patents, Washington, D.C. 20231, on (DATE MAILED)”

(Name - Typed or Printed)

Signature

Date

If a receipt for any paper filed in the PTO is desired, applicant should include a stamped, self-addressed postcard, which lists, on the message side applicant’s name and address, the application number, and filing date, the types of papers submitted with the reply (i.e., 1 sheet of drawings, 2 pages of amendments, 1 page of an oath/declaration, etc.). This postcard will be stamped with the date of receipt by the Mail Room and returned to applicant. This postcard will be applicant’s evidence that the reply was received by the Office on that date.

If applicant changes his or her mailing address after filing an application, the Office must be notified in writing of the new address. Failure to do so will result in future communications being mailed to the old address, and there is no guarantee that these communications will be forwarded to applicant’s new address. Applicant’s failure to receive, and properly reply to, these Office communications will result in the application being held abandoned. Notification of “Change of Address” should be made by separate letter, and a separate notification should be filed for each application.

Upon submission of a reply to an Office action, the application will be reconsidered and further examined in view of applicant’s remarks and any amendments included with the reply. The examiner will then either withdraw the rejection and allow the application or, if not persuaded by the remarks and/or amendments submitted, repeat the rejection and make it Final. Applicant may file an appeal with the Board of Patent Appeals and Interferences after given a final rejection or after the claim has been rejected twice. Applicant may also file a new application prior to the abandonment of the original application, claiming benefit of the earlier filing date. This will allow continued prosecution of the claim.