Sent: Tuesday, November 16, 1999 3:13 PM
Subject: Re: Proposed relaxation of the USPTO drawing standards to meet the Patent Office Business Goals
Dear Assistant Commissioner,
Respectfully submitted below are comments relating to the proposed changes in drawing disclosure requirements for applications submitted to the Patent & Trademark Office as specified in the Federal Register, Vol. 64, No. 191. Specifically the effect of the relaxation of the USPTO drawing standards and the corresponding dramatic impacts that the changes (as proposed) would have on: American patent applicants, Intellectual Property Attorneys, the Patent Drafting Profession and Patent Examiners.
At the end of this letter, I give my recommendations for a reasonable solution to the burdensome handling problems that are currently being encountered by the PTO.
As a preface to my comments, I would like to validate my credentials and experience in the hopes that my input would be weighed accordingly. I am the owner of R & J Patent Drafting, located at 28245 Avenue Crocker, Suite 100, Valencia CA, 91355. Our toll-free number is 800-338-4561.
Our firm has been assisting intellectual property attorneys with both application and litigation illustrations since 1969 (30 years). I myself am "a seasoned professional Patent Illustrator and have been responsible for communicating the expertise and training of our field to the 10 current illustrators on staff at our firm, most of whom are cross trained to perform traditional drawing board drafting and rendering as well as Computer Aided Drafting.
We service in excess of 500 legal professionals and are responsible for generating more patent drawing disclosures than any other firm in the nation. The volume of our production is only important because of the trade knowledge that we have consequently amassed.
Comments relating to United States Patent Applicants:
1. As professional patent illustrators, our primary objective when developing a patent drawing disclosure is to create a set of illustrations that clearly and succinctly accentuate the "new and novel" features of a device. This is critical to both the examination process and the issuance of claims. The relaxation of the drawing standards will result in more applicants using their own judgement on what is required to adequately illustrate claims, resulting in an overall weakening of an application.
2. There are strict materials cross-hatching guidelines that are defined at this time enabling applicants to specify the materials (semi-conductor, plastic, insulation, etc..) that further strengthen a patent drawing disclosure. Most common ANSI hatching patterns used in industry for materials do not match the PTO materials hatching rules. Patents issue, even at this time, with all of the hatching being defined as metal (single line hatching). These disclosures, not prepared by a professional patent illustrator result in the inability to defend material composition in litigation.
3. Design patents are in special jeopardy with the proposed changes. Over the years we have had the unfortunate responsibility of attempting to salvage inconsistent design patent disclosures that were filed either by applicants or by attorneys under time constraints to meet foreign filing deadlines.
Many design patent applicants under the new rulings may be subjecting themselves to untold problems with their design patent drawing submissions. In addition to the lack of proper rendering techniques to properly define the exact contours and appearance of their designs, many applicants are unaware of the new matter objections that can be raised by improper, inadequate or inconsistent design patent disclosures.
It is our opinion that conveying an impression of drawing standards that would motivate applicants to submit "whatever they think is acceptable" would result in a measurable increase in fatal design patent disclosures and an overall weakening of design patent quality.
4. In defense of American businesses, who are already being severely impacted by global competition, I feel that we all need to do anything that we can to ensure the continued strength of American patents and not lower the bar for a flood of problems compounded by vague foreign patent disclosures. Not only will this gray the area of patent claims defense, but it will result in more litigation sapping the resources of U.S. companies.
5. Constraining the entire drawing quality review process to the examinerÂ’s ability to decipher the drawing for examination purposes only would be an enormous dis-service to U.S. patent applicants. Applicants usually spend thousands of dollars on their application and are trusting intellectual Property Professionals and the PTO to be operating in their best interests in relation to the issuance of valid claims and the legal defense of those claims, both at home and abroad.
Comments relating to United States Patent Attorneys:
1. Most of the Intellectual Property Law community in the U.S. is involved in the defense of patents, not in the filing of patent applications. Therefore, it stands to reason that the published patents that they have to work with in the defense of their clients must be of the highest quality.
After an application is issued and published, litigators are generally left with the published detailed specification, claims, and drawing disclosure to leverage in an infringement case. The quality of all three of these components weighs equally. As stated above, the content of these drawings needs to be strongly defensive of the claims. Also, the quality of the drawings needs to be such that a 3' X 4' enlargement can be produced for court exhibit purposes. Even the cleanest of published patent illustrations are marginal in quality when subjected to this level of enlargement. Drawings of lesser precision may also be completely rejected as admissible by higher courts.
2. Many attorneys rely on professional illustrators, such as ourselves, to assist them with building strong and defensible drawing disclosures. They are dependent on the PTO to maintain standards for drawing disclosures that will at least preserve the current level of quality and drawing disclosure content. Attorneys are also dependent on high quality patent illustrations as a part of the value added services that they offer.
3. The knowledge that drawings of marginal quality are being accepted by the PTO may increase the amount of spurious litigation by infringing parties.
4. Submitting "merely adequate" drawings may subject attorneys to malpractice claims from patent applicants who put their trust in their legal professionalism.
5. The patent search process will become more difficult, time consuming and therefore more expensive for everyone without the benefit of professionally drafted disclosures with due consideration of accentuation of patent claims.
Comments relating to Patent Illustration Professionals:
1. The field of Patent Illustration is very much a world of "trade knowledge". Only through years of experience and exposure to the challenges of the patent application process can one gain the experience necessary to layout and render drawing disclosures that meet all of the uses for which a drawing disclosure may be scrutinized. These uses include: initial examination, quality drawings for publication, use of drawings for litigation and delivery of drawings to an applicant & the PTO as a final product of the application process by a Patent Law Professional.
If a set standard is not maintained for U.S. patent illustrations, all of the above mentioned uses of patent illustrations will be impacted. In addition, the number of available patent illustrators to do the work of supporting the IP law fields and its applicants will be reduced.
2. The continuance of the professional patent drafting field will be jeopardized by a relaxation of the drawing standards. The last 10 years has seen a complete discontinuation of drawing board training in the educational institutions worldwide. As a firm, we have taken upon ourselves to train our illustrators in board drafting and rendering skills, along with Computer Aided Drafting. The average training curve for an illustrator to become fully qualified is seven (7) years. If these individuals, and others like them, are lost, there will be no way to recover them if there is a determination that these changes were not such a good idea after all.
This may seem like a personal problem for the individuals who are in this profession, but I have experienced firsthand our value to both applicants and the Intellectual property community. It is my professional assessment that the reduction of qualified patent illustrators, coupled with the acceleration in the number of applications would have broad reaching detrimental effects on U.S Patent applicants & the PTO itself.
Comments relating to United States Patent Examiners:
1. The problems that have will be exacerbated, not solved, by the lowering of the drawing standards. If the percentage of applications not acceptable for examination were to rise on the incoming end of the application, you would actually create more work and paper handling than is being experienced presently.
2. The patent examiners will bearing the responsibility to approve drawings whose quality may be adequate for a review but completely unacceptable for foreign filing purposes.
3. It is unfair & improper to expect the PTO to be responsible to ensure that the applicant's drawings will be adequate to undergo all of the scrutiny that they may be subjected to during domestic or international litigation.
4. If the Patent Examiners are the arbiters of drawing quality, the WILL be* the ones called as expert witnesses to testify concerning their interpretations of drawings and patent claims in patent litigation, putting an additional undue strain on the PTOÂ’s manpower resources.
5. Lower drawing standards will be counter productive to the Patent Office's goals of becoming completely electronic in its filing processes, which will inevitably require that all electronic files be publishable from disk and printable for review at the time of initial application.
Having stated the above genuine pitfalls that will result from a reduction in the USPTO drawing standards, I would like to give some reasonable suggestions that will accomplish the PTO's goals of streamlining its operations as well as maintaining the critical content and quality of patent drawing disclosures:
1. Require formal, publishable drawings prior to the examination process.
2. If an applicant files an informal drawing disclosure, maintain the applicants filing date and issue a drawing objection giving the applicant 90 days to provide the formal drawings and staling that the application will not be reviewed until the receipt of the formal drawings. This will enable all applicants an equal playing field on the filing dates and adequate time to have properly rendered drawings prepared for examination.
3. Hold all incoming patent illustrations to the following simple standards:
A. All drawings must be submitted on A-4 paper meeting PCT margin requirements
B. All lines must be clean, black and of uniform thickness
C. Material cross hatching must be consistent with established PTO standards.
D. Lettering and numbers must be plain and legible and measure at least .32cm (1/8 inch) in height.
E. Design drawings must constitute a full disclosure of the device and continue to be rendered to currently established standards.
F. Surface shading on utility patents should be optional.
Benefits of the above approach:
If formal drawings which are acceptable for publication are required to the examination process, the following benefits would be realized:
1. Examiners would always have clean readable drawings for review, simplifying and expediting their work.
2. Drawing revisions required by examiners would be dramatically minimized and new drawings could be required to be submitted within time frames that are acceptable to the PTO (we recommend 60 days).
3. If claims are allowed and the drawings required no revisions (which most would not), notices of allowances could be sent with a statutory period of 30 days to pay the issue fee.
3. Patent publications would be clean and defensible in court.
4. Requirement of formal drawings for examination purposes will be a mandatory requirement with all future anticipated electronic filings. Establishing this now will ease and speed up the transition to electronic filings.
5. Applicants will be assured of standards that will be defensible and acceptable internationally.
6. Informal drawings would never go to publication, as they do in even some cases now; which results in a weakening of their published quality.
7. The time from application date to notice of allowance would be shortened and the process streamlined to meet the business objectives of the PTO.
7. The USPTO would be upholding a standard that would continue its worldwide reputation for excellence and not be lowering itself to the mediocre standards of other international Patent Offices.
It is my final view that the relaxing of USPTO drawing standards will create more problems than it will solve. The proposed solution of the enforcement of simplified formal drawing standards, coupled with the requirement of formal drawings prior to examination would bring an enormous relief to the current burden of the PTO as well as position the PTO for its objectives of moving toward electronic filings.
As you can tell by the content and thoughtfulness of the above comments, I have very deep rooted concerns for the parties and issues addressed in this document, including the business interests of the PTO and the public
Thank you in advance for your inclusion of my comments in the decision making process and for the consideration of the practical solutions outlined herein.
Feel free to contact me directly if the need arises.
Patrick D. McKnight
R&J Patent Drafting