MPEP § 1503.02 — Drawing (Annotated Rules)
§1503.02 Drawing
This page consolidates and annotates all enforceable requirements under MPEP § 1503.02, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Drawing
This section addresses Drawing. Primary authority: 35 U.S.C. 112(a), 35 U.S.C. 112, and 35 U.S.C. 171. Contains: 4 requirements, 1 prohibition, 5 permissions, and 4 other statements.
Key Rules
Design Specification
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
If color photographs or color drawings are filed with the original application, color will be considered an integral part of the disclosed and claimed design. The omission of color in later filed photographs or drawings will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the color at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP § 1503.01, subsection II. Note also 37 CFR 1.152, which requires that photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
If color photographs or color drawings are filed with the original application, color will be considered an integral part of the disclosed and claimed design. The omission of color in later filed photographs or drawings will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the color at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP § 1503.01, subsection II. Note also 37 CFR 1.152, which requires that photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
If color photographs or color drawings are filed with the original application, color will be considered an integral part of the disclosed and claimed design. The omission of color in later filed photographs or drawings will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the color at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP § 1503.01, subsection II. Note also 37 CFR 1.152, which requires that photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
If color photographs or color drawings are filed with the original application, color will be considered an integral part of the disclosed and claimed design. The omission of color in later filed photographs or drawings will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the color at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP § 1503.01, subsection II. Note also 37 CFR 1.152, which requires that photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Drawing Standards
Where color drawings and color photographs are submitted, only one set of color drawings or color photographs are required if submitted via the USPTO patent electronic filing system. Three sets of color drawings or color photographs are required if not submitted via the USPTO patent electronic filing system. See 37 CFR 1.84(a)(2)(ii). In addition the specification must contain, or be amended to contain, the following language as the first paragraph of the brief description of the drawings: –The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.– See 37 CFR 1.84(a)(2)(iii) and MPEP § 608.02.
Where color drawings and color photographs are submitted, only one set of color drawings or color photographs are required if submitted via the USPTO patent electronic filing system. Three sets of color drawings or color photographs are required if not submitted via the USPTO patent electronic filing system. See 37 CFR 1.84(a)(2)(ii). In addition the specification must contain, or be amended to contain, the following language as the first paragraph of the brief description of the drawings: –The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.– See 37 CFR 1.84(a)(2)(iii) and MPEP § 608.02.
Where color drawings and color photographs are submitted, only one set of color drawings or color photographs are required if submitted via the USPTO patent electronic filing system. Three sets of color drawings or color photographs are required if not submitted via the USPTO patent electronic filing system. See 37 CFR 1.84(a)(2)(ii). In addition the specification must contain, or be amended to contain, the following language as the first paragraph of the brief description of the drawings: –The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.– See 37 CFR 1.84(a)(2)(iii) and MPEP § 608.02.
Color drawings are permitted in design applications when filed in accordance with the requirements of 37 CFR 1.84(a)(2). As an alternative to color drawings, surfaces of the design may be lined in accordance with the graphic symbols discussed in MPEP § 608.02, subsection IX, to represent color in black and white line drawings (37 CFR 1.84(a)(1)). See 37 CFR 1.84(n). If the drawing in an application is lined for color, the following statement should be inserted in the specification for clarity and to avoid possible confusion that the lining may be surface treatment –The drawing is lined for color.– However, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph), as surface shading cannot be used simultaneously to define the contours of those surfaces.
Color drawings are permitted in design applications when filed in accordance with the requirements of 37 CFR 1.84(a)(2). As an alternative to color drawings, surfaces of the design may be lined in accordance with the graphic symbols discussed in MPEP § 608.02, subsection IX, to represent color in black and white line drawings (37 CFR 1.84(a)(1)). See 37 CFR 1.84(n). If the drawing in an application is lined for color, the following statement should be inserted in the specification for clarity and to avoid possible confusion that the lining may be surface treatment –The drawing is lined for color.– However, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph), as surface shading cannot be used simultaneously to define the contours of those surfaces.
Lack of Antecedent Basis (MPEP 2173.05(e))
When inconsistencies are found among the views, the examiner should object to the drawings and request that the views be made consistent. Ex parte Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978); Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496, 503 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972). When the inconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite. See MPEP § 1504.04, subsection I.A.
If the photographs are not of sufficient quality so that all details in the photographs are reproducible, this will form the basis of subsequent objection to the quality of the photographic disclosure. No application will be issued until objections directed to the quality of the photographic disclosure have been resolved and acceptable photographs have been submitted and approved by the examiner. If the details, appearance and shape of all the features and portions of the design are not clearly disclosed in the photographs, this would form the basis of a rejection of the claim under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite.
If the photographs are not of sufficient quality so that all details in the photographs are reproducible, this will form the basis of subsequent objection to the quality of the photographic disclosure. No application will be issued until objections directed to the quality of the photographic disclosure have been resolved and acceptable photographs have been submitted and approved by the examiner. If the details, appearance and shape of all the features and portions of the design are not clearly disclosed in the photographs, this would form the basis of a rejection of the claim under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite.
AIA Effective Dates
When inconsistencies are found among the views, the examiner should object to the drawings and request that the views be made consistent. Ex parte Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978); Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496, 503 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972). When the inconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite. See MPEP § 1504.04, subsection I.A.
If the photographs are not of sufficient quality so that all details in the photographs are reproducible, this will form the basis of subsequent objection to the quality of the photographic disclosure. No application will be issued until objections directed to the quality of the photographic disclosure have been resolved and acceptable photographs have been submitted and approved by the examiner. If the details, appearance and shape of all the features and portions of the design are not clearly disclosed in the photographs, this would form the basis of a rejection of the claim under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite.
Color drawings are permitted in design applications when filed in accordance with the requirements of 37 CFR 1.84(a)(2). As an alternative to color drawings, surfaces of the design may be lined in accordance with the graphic symbols discussed in MPEP § 608.02, subsection IX, to represent color in black and white line drawings (37 CFR 1.84(a)(1)). See 37 CFR 1.84(n). If the drawing in an application is lined for color, the following statement should be inserted in the specification for clarity and to avoid possible confusion that the lining may be surface treatment –The drawing is lined for color.– However, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph), as surface shading cannot be used simultaneously to define the contours of those surfaces.
Article of Manufacture Requirement
The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).
The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).
The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).
Design Patent Drawings
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Drawings in design applications may be submitted in black and white or in color. See 37 CFR 1.84(a). Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. However, the Office will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b). See also 37 CFR 1.81(c) and 37 CFR 1.83(c), and MPEP § 608.02.
Surface Shading Requirements
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Broken Lines (Unclaimed Subject Matter)
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Photographs in Design Applications
Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.
Drawings in design applications may be submitted in black and white or in color. See 37 CFR 1.84(a). Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. However, the Office will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b). See also 37 CFR 1.81(c) and 37 CFR 1.83(c), and MPEP § 608.02.
Design Application Requirements
Photographs and drawings must not be combined in a submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the drawings as compared with the photographs.
Photographs and drawings must not be combined in a submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the drawings as compared with the photographs.
Drawing Views Required
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Design Claim Form
Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.
Surface Ornamentation
The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).
Computer-Generated Icons and GUI
The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).
Photographs
Where color drawings and color photographs are submitted, only one set of color drawings or color photographs are required if submitted via the USPTO patent electronic filing system. Three sets of color drawings or color photographs are required if not submitted via the USPTO patent electronic filing system. See 37 CFR 1.84(a)(2)(ii). In addition the specification must contain, or be amended to contain, the following language as the first paragraph of the brief description of the drawings: –The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.– See 37 CFR 1.84(a)(2)(iii) and MPEP § 608.02.
Claims
When filing photographs or drawings with the original application, a disclaimer included in the specification or on the photographs themselves may be used to disclaim any surface ornamentation, logos, written matter, etc. which form no part of the claimed design. See also MPEP § 1503.01, subsection II.
Patent Application Content
Form paragraph 15.61.01 may be used, where appropriate, to notify applicant regarding amending the specification to add a reference to color drawings or photographs.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity ( 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of the claimed invention in a continuing application.
- Drawing Or Photograph Required For Design Patent Application
- Drawing Must Be Clear and Complete
- Color Drawings Permitted for Design Applications
- Color Representation Alternative for Design Drawings
- Specification Must Describe Lined Color Drawings
- Inconsistencies Among Views Must Be Resolved
- Claim Rejection for Inconsistent Views
- Requirement for Acceptable Photographic Disclosure
The ornamental design which is being claimed must be shown in solid lines in the drawing. Broken lines for the purpose of indicating unimportant or immaterial features of the design are not permitted. There are no portions of a claimed design which are immaterial or unimportant. See In re Blum , 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn , 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates Drawing Standards Lack of Antecedent Basis (MPEP 2173.05(e)) | 35 U.S.C. § 112 |
| AIA Effective Dates Drawing Standards Lack of Antecedent Basis (MPEP 2173.05(e)) | 35 U.S.C. § 112(a) |
| Article of Manufacture Requirement Computer-Generated Icons and GUI Surface Ornamentation | 35 U.S.C. § 171 |
| Design Specification | 37 CFR § 1.152 |
| Design Patent Drawings Photographs in Design Applications | 37 CFR § 1.81(c) |
| Design Patent Drawings Photographs in Design Applications | 37 CFR § 1.83(c) |
| Broken Lines (Unclaimed Subject Matter) Design Patent Drawings Design Specification Drawing Views Required Surface Shading Requirements | 37 CFR § 1.84 |
| Design Patent Drawings Photographs in Design Applications | 37 CFR § 1.84(a) |
| AIA Effective Dates Drawing Standards | 37 CFR § 1.84(a)(1) |
| AIA Effective Dates Drawing Standards | 37 CFR § 1.84(a)(2) |
| Drawing Standards Photographs | 37 CFR § 1.84(a)(2)(ii) |
| Drawing Standards Photographs | 37 CFR § 1.84(a)(2)(iii) |
| Design Patent Drawings Photographs in Design Applications | 37 CFR § 1.84(b) |
| AIA Effective Dates Drawing Standards | 37 CFR § 1.84(n) |
| Claims Design Specification | MPEP § 1503.01 |
| Article of Manufacture Requirement Computer-Generated Icons and GUI Surface Ornamentation | MPEP § 1504.01 |
| Article of Manufacture Requirement Computer-Generated Icons and GUI Surface Ornamentation | MPEP § 1504.01(a) |
| AIA Effective Dates Lack of Antecedent Basis (MPEP 2173.05(e)) | MPEP § 1504.04 |
| AIA Effective Dates Design Patent Drawings Drawing Standards Photographs Photographs in Design Applications | MPEP § 608.02 |
| – | Form Paragraph § 15.05.041 |
| Patent Application Content | Form Paragraph § 15.61.01 |
| AIA Effective Dates Lack of Antecedent Basis (MPEP 2173.05(e)) | Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496, 503 (E.D. Pa. 1970) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1503.02 — Drawing
Source: USPTO1503.02 Drawing [R-01.2024]
37 CFR 1.152 Design drawings.
The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.
When inconsistencies are found among the views, the examiner should object to the drawings and request that the views be made consistent. Ex parte Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978); Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496, 503 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972). When the inconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite. See MPEP § 1504.04, subsection I.A.
¶ 15.05.03 Drawing/Photograph Disclosure Objected To
The drawing/photograph disclosure is objected to because [1].
Examiner Note:
In bracket 1, insert the reason for the objection.
¶ 15.05.04 Replacement Drawing Sheets Required
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as amended. If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
¶ 15.05.05 Drawing Correction Required Prior to Appeal
Any appeal of the design claim must include the correction of the drawings approved by the examiner in accordance with Ex parte Bevan, 142 USPQ 284 (Bd. App. 1964).
Examiner Note:
This form paragraph can be used in a FINAL rejection where an outstanding requirement for a drawing correction has not been satisfied.
¶ 15.07 Avoidance of New Matter
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Form paragraph 15.48 may be used to notify applicant of the necessity for good drawings.
¶ 15.48 Necessity for Good Drawings
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of the claimed invention in a continuing application.
In addition to the criteria set forth in 37 CFR 1.81–1.88, design drawings must also comply with 37 CFR 1.152 as follows:
I. VIEWSThe drawings or photographs should contain a sufficient number of views to disclose the complete appearance of the design claimed, which may include the front, rear, top, bottom and sides. Where three-dimensional aspects of a design are not claimed, a single plan- or planar-view may be sufficient to adequately disclose the claimed design. For example, in In re Maatita, 900 F.3d. 1369, 1378-1379, 127 USPQ2d 1640 (Fed. Cir. 2018), the Federal Circuit held that a claim to an ornamental design for a shoe bottom satisfied the enablement and definiteness requirements of 35 U.S.C. 112, where the scope of the claimed design was capable of being understood from a single, two-dimensional, plan-view. The Federal Circuit distinguished the design for a rug or a placemat, which “is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration,” from the design for an entire shoe or teapot, which is “inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar-view drawing.” Maatita, 900 F.3d at 1378. See also MPEP § 1504.04, subsection I.
Perspective views are suggested and may be submitted to clearly show the appearance of three dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective.
Views that are merely duplicative of other views of the design or that are flat and include no surface ornamentation may be omitted from the drawing if the specification makes this explicitly clear. See MPEP § 1503.01, subsection II. For example, if the left and right sides of a design are identical or a mirror image, a view should be provided of one side and a statement made in the drawing description that the other side is identical or a mirror image. If the design has a flat bottom, a view of the bottom may be omitted if the specification includes a statement that the bottom is flat and devoid of surface ornamentation. The term “unornamented” should not be used to describe visible surfaces which include structure that is clearly not flat. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961).
Sectional views presented solely for the purpose of showing the internal construction or functional/ mechanical features are unnecessary and may lead to confusion as to the scope of the claimed design. The examiner should object to such views and require their cancellation. Ex parte Tucker, 1901 C.D. 140, 97 O.G. 187 (Comm’r Pat. 1901); Ex parte Kohler, 1905 C.D. 192, 116 O.G. 1185 (Comm’r Pat. 1905). However, where the exact contour or configuration of the exterior surface of a claimed design is not apparent from the views of the drawing, and no attempt is made to illustrate features of internal construction, a sectional view may be included to clarify the shape of said design. Ex parte Lohman, 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat. 1912). When a sectional view is added during prosecution, the examiner must determine whether there is antecedent basis in the original disclosure for the material shown in hatching in the sectional view 37 CFR 1.84(h)(3) and MPEP § 608.02.
II. SURFACE SHADINGWhile surface shading is not required under 37 CFR 1.152, it may be necessary in particular cases to shade the figures to show clearly the character and contour of all surfaces of any 3-dimensional aspects of the design. Surface shading is also necessary to distinguish between any open and solid areas of the article. However, surface shading should not be used on unclaimed subject matter, shown in broken lines, to avoid confusion as to the scope of the claim.
Lack of appropriate surface shading in the drawing as filed may render the design nonenabling and indefinite under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs). Additionally, if the surface shape is not evident from the disclosure as filed, the addition of surface shading after filing may comprise new matter. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror. Contrast in materials may be shown by using line shading in one area and stippling in another. By using this technique, the claim will broadly cover contrasting surfaces unlimited by colors. The claim would not be limited to specific material either, as long as the appearance of the material does not patentably depart from the visual appearance illustrated in the drawing.
III. BROKEN LINESThe two most common uses of broken lines are to disclose the environment related to the claimed design and to define the bounds of the claim. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design. See In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Unclaimed subject matter may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary. When a boundary line is introduced via amendment or in a continuation application, the introduction of the boundary line must comply with the written description requirement of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph). See In re Owens, 710 F.3d 1362, 1366-67, 106 USPQ2d 1248, 1251 (Fed. Cir. 2013). For example, unclaimed boundary lines should satisfy the written description requirement where they make explicit a boundary that already exists, but was unclaimed in the original disclosure. See Owens, 710 F.3d at 1368-69, 106 USPQ2d at 1252. Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter where such amendment complies with the written description requirement of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph). Additionally, any broken line boundary other than a straight broken line may constitute new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
However, broken lines are not permitted for the purpose of indicating that a portion of an article is of less importance in the design. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967). Broken lines may not be used to show hidden planes and surfaces which cannot be seen through opaque materials. The use of broken lines indicates that the environmental structure or the portion of the article depicted in broken lines forms no part of the design, and is not to indicate the relative importance of parts of a design.
In general, when broken lines are used, they should not intrude upon or cross the showing of the claimed design and should not be of heavier weight than the lines used in depicting the claimed design. When broken lines cross over the full line showing of the claimed design and are defined as showing environment, it is understood that the surface which lies beneath the broken lines is part of the claimed design. When the broken lines crossing over the design are defined as boundaries, it is understood that the area within the broken lines is not part of the claimed design. Therefore, when broken lines are used which cross over the full line showing of the design, it is critical that the description of the broken lines in the specification explicitly identifies their purpose so that the scope of the claim is clear. As it is possible that broken lines with different purposes may be included in a single application, the description must make a visual distinction between the two purposes; such as –The broken lines immediately adjacent the shaded areas represent the bounds of the claimed design while all other broken lines are directed to environment and are for illustrative purposes only; the broken lines form no part of the claimed design.– Where a broken line showing of environmental structure must necessarily cross or intrude upon the representation of the claimed design and obscures a clear understanding of the design, such an illustration should be included as a separate figure in addition to the other figures which fully disclose the subject matter of the design. Further, surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim.
The following form paragraphs may be used, where appropriate, to notify applicant regarding the use of broken lines in the drawings.
¶ 15.50 Use of Broken Lines for Indicating Unimportant Features Not Permitted
The ornamental design which is being claimed must be shown in solid lines in the drawing. Broken lines for the purpose of indicating unimportant or immaterial features of the design are not permitted. There are no portions of a claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
¶ 15.50.01 Use of Broken Lines in Drawing (Ch. 16 Design Application)
Environmental structure may be illustrated by broken lines in the drawing if clearly designated as environment in the specification. See 37 CFR 1.152 and MPEP § 1503.02, subsection III.
Examiner Note:
Do not use this form paragraph in an international design application.
¶ 15.50.02 Description of Broken Lines (Ch. 16 Design Application)
A statement similar to the following should be used to describe the broken lines on the drawing (MPEP § 1503.02, subsection III):
— The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design. —
A statement similar to the one above [3] inserted in the specification preceding the claim.
Examiner Note:
- 1. Do not use this form paragraph in an international design application.
- 2. In bracket 1, insert name of structure.
- 3. In bracket 2, insert –portions of the “article”– or –environmental structure–.
- 4. In bracket 3, insert –must be– or –has been–.
¶ 15.50.04 Proper Drawing Disclosure With Use of Broken Lines
Where superimposed broken lines showing environmental structure obscure the full line disclosure of the claimed design, a separate figure showing the broken lines must be included in the drawing in addition to the figures showing only claimed subject matter, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
¶ 15.50.05 Description of Broken Lines as Boundary of Design (Ch. 16 Design Application)
The following statement must be used to describe the broken line boundary of a design (MPEP § 1503.02, subsection III):
–The [1] broken line(s) define the bounds of the claimed design and form no part thereof.–
Examiner Note:
- 1. Do not use this form paragraph in an international design application.
- 2. In bracket 1 insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).
A disclosure of surface treatment in a design drawing or photograph will normally be considered as prima facie evidence that the inventor considered the surface treatment shown as an integral part of the claimed design. An amendment canceling two-dimensional surface treatment or reducing it to broken lines will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the surface treatment at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998). Applicant may remove surface treatment shown in a drawing or photograph of a design without such removal being treated as new matter, provided that the surface treatment does not obscure or override the underlying design. The removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, removal of beading, grooves, and ribs, will introduce new matter as the underlying configuration revealed by this amendment would not be apparent in the application as originally filed. See MPEP § 1504.04, subsection I.B.
V. PHOTOGRAPHS AND COLOR DRAWINGSDrawings in design applications may be submitted in black and white or in color. See 37 CFR 1.84(a). Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. However, the Office will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b). See also 37 CFR 1.81(c) and 37 CFR 1.83(c), and MPEP § 608.02.
Where color drawings and color photographs are submitted, only one set of color drawings or color photographs are required if submitted via the USPTO patent electronic filing system. Three sets of color drawings or color photographs are required if not submitted via the USPTO patent electronic filing system. See 37 CFR 1.84(a)(2)(ii). In addition the specification must contain, or be amended to contain, the following language as the first paragraph of the brief description of the drawings: –The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.– See 37 CFR 1.84(a)(2)(iii) and MPEP § 608.02.
If the photographs are not of sufficient quality so that all details in the photographs are reproducible, this will form the basis of subsequent objection to the quality of the photographic disclosure. No application will be issued until objections directed to the quality of the photographic disclosure have been resolved and acceptable photographs have been submitted and approved by the examiner. If the details, appearance and shape of all the features and portions of the design are not clearly disclosed in the photographs, this would form the basis of a rejection of the claim under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite.
Photographs and drawings must not be combined in a submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the drawings as compared with the photographs.
When filing photographs or drawings with the original application, a disclaimer included in the specification or on the photographs themselves may be used to disclaim any surface ornamentation, logos, written matter, etc. which form no part of the claimed design. See also MPEP § 1503.01, subsection II.
Color drawings are permitted in design applications when filed in accordance with the requirements of 37 CFR 1.84(a)(2). As an alternative to color drawings, surfaces of the design may be lined in accordance with the graphic symbols discussed in MPEP § 608.02, subsection IX, to represent color in black and white line drawings (37 CFR 1.84(a)(1)). See 37 CFR 1.84(n). If the drawing in an application is lined for color, the following statement should be inserted in the specification for clarity and to avoid possible confusion that the lining may be surface treatment –The drawing is lined for color.– However, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph), as surface shading cannot be used simultaneously to define the contours of those surfaces.
If color photographs or color drawings are filed with the original application, color will be considered an integral part of the disclosed and claimed design. The omission of color in later filed photographs or drawings will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the color at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP § 1503.01, subsection II. Note also 37 CFR 1.152, which requires that photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.
Form paragraph 15.05.041 may be used when color drawing(s) or photograph(s) have been submitted.
¶ 15.05.041 Color Drawing(s)/Photograph(s) Submitted
Color photographs or drawings have been submitted in this application. If replacement drawings are submitted, any showing of color in a black and white drawing is limited to the symbols used to line a surface to show color (MPEP § 608.02) and must comply with the written description requirements of 35 U.S.C. 112. Additionally, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112 because surface shading cannot be used simultaneously to define the contours of those surfaces. However, a surface may be partially lined for color with a description that the color extends across the entire surface; this technique would allow for the use of shading on the rest of the surface showing the contours of the design (37 CFR 1.152). In the alternative, a separate view, properly shaded to show the contours of the design but omitting the color(s), may be submitted if identified as shown only for clarity of illustration. Photographs and ink drawings are not permitted to be combined as drawings in one application.
In any drawing lined for color, the following descriptive statement must be inserted in the specification (the specific colors may be identified for clarity):
–The drawing is lined for color.–
However, some designs disclosed in color photographs/drawings cannot be depicted in black and white drawings lined for color. For example, a design may include multiple shades of a single color which cannot be accurately represented by the single symbol for a specific color. Or, the color may be a shade other than a true primary or secondary color as represented by the drafting symbols and lining the drawing with one of the drafting symbols would not be an exact representation of the design as originally disclosed.
Examiner Note:
Use this form paragraph when color drawing(s) or photograph(s) have been submitted in an application.
Form paragraph 15.61.01 may be used, where appropriate, to notify applicant regarding amending the specification to add a reference to color drawings or photographs.
¶ 15.61.01 Amend Specification to Add Reference to Color Drawing(s)/ Photograph(s) (Ch. 16 Design Application)
The application contains at least one color drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color drawings/photographs in design applications, the specification [1] amended to include the following language as the first paragraph of the brief description of the drawings section:
The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.
Examiner Note:
- 1. Do not use this form paragraph in an international design application.
- 2. In bracket 1, insert –must be– or –has been–.