Can a rejected design patent application be amended to remove offensive content?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

While the MPEP 1504.01(e) does not specifically address amending rejected design patent applications to remove offensive content, general patent prosecution principles suggest that it may be possible in some cases. However, there are important considerations:

1. Statutory Basis: The rejection is based on 35 U.S.C. 171, which defines the statutory requirements for design patents.
2. New Matter: Any amendment must not introduce new matter, as per MPEP 608 and related sections.
3. Substantial Changes: Removing offensive elements might substantially change the design, potentially affecting its patentability.
4. Examiner Discretion: The examiner would need to determine if the amended design sufficiently addresses the offensive content concern.

Applicants considering such amendments should consult with a patent attorney to navigate these complex issues and determine the best course of action.