MPEP § 1504 — Examination (Annotated Rules)
§1504 Examination
This page consolidates and annotates all enforceable requirements under MPEP § 1504, 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.
Examination
This section addresses Examination. Contains: 2 requirements and 2 other statements.
Key Rules
35 U.S.C. 102 – Novelty / Prior Art
Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is also mandatory that the search be extended to the mechanical classes encompassing inventions of the same general type. Catalogs and trade journals as well as available foreign patent databases are also to be consulted.
Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is also mandatory that the search be extended to the mechanical classes encompassing inventions of the same general type. Catalogs and trade journals as well as available foreign patent databases are also to be consulted.
Types of Claim Status in Reissue
If the examiner determines that the claim of the design patent application does not satisfy the statutory requirements, the examiner will set forth in detail, and may additionally summarize, the basis for all rejections in an Office action. If a reply to an Office action overcomes a rejection either by way of an amendment to the claim or by providing convincing arguments that the rejection should be withdrawn, that rejection must be indicated as withdrawn in the next Office action, unless such action is a notice of allowability. Likewise, any amendment to the specification or claim, or new drawing or drawing correction submitted in reply to an objection or objections in an Office action must be acknowledged in the next Office action, unless such action is a notice of allowability. When an examiner determines that the claim in a design application is patentable under all statutory requirements, but formal matters still need to be addressed and corrected prior to allowance, an Ex parte Quayle action will be sent to applicant indicating allowability of the claim and identifying the necessary corrections.
Ex Parte Quayle Action
If the examiner determines that the claim of the design patent application does not satisfy the statutory requirements, the examiner will set forth in detail, and may additionally summarize, the basis for all rejections in an Office action. If a reply to an Office action overcomes a rejection either by way of an amendment to the claim or by providing convincing arguments that the rejection should be withdrawn, that rejection must be indicated as withdrawn in the next Office action, unless such action is a notice of allowability. Likewise, any amendment to the specification or claim, or new drawing or drawing correction submitted in reply to an objection or objections in an Office action must be acknowledged in the next Office action, unless such action is a notice of allowability. When an examiner determines that the claim in a design application is patentable under all statutory requirements, but formal matters still need to be addressed and corrected prior to allowance, an Ex parte Quayle action will be sent to applicant indicating allowability of the claim and identifying the necessary corrections.
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.
The claimed design is patentable over the references cited.
This application is in condition for allowance except for the following formal matters: [1] .
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle , 25 USPQ 74, 453 OG 213 (Comm'r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this Office action beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
The indication of allowability set forth in the previous action is withdrawn and prosecution is reopened in view of the following new ground of rejection.
As the value of a design patent is largely dependent upon the skillful preparation of the drawings and specification, applicant might consider it desirable to employ the services of a registered patent attorney or agent. The U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent.
A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/ . Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
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 § 1504 — Examination
Source: USPTO1504 Examination [R-01.2024]
In design patent applications, ornamentality, novelty, nonobviousness, enablement, and definiteness are necessary prerequisites to the grant of a patent. The inventive novelty or unobviousness resides in the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.
Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is also mandatory that the search be extended to the mechanical classes encompassing inventions of the same general type. Catalogs and trade journals as well as available foreign patent databases are also to be consulted.
If the examiner determines that the claim of the design patent application does not satisfy the statutory requirements, the examiner will set forth in detail, and may additionally summarize, the basis for all rejections in an Office action. If a reply to an Office action overcomes a rejection either by way of an amendment to the claim or by providing convincing arguments that the rejection should be withdrawn, that rejection must be indicated as withdrawn in the next Office action, unless such action is a notice of allowability. Likewise, any amendment to the specification or claim, or new drawing or drawing correction submitted in reply to an objection or objections in an Office action must be acknowledged in the next Office action, unless such action is a notice of allowability. When an examiner determines that the claim in a design application is patentable under all statutory requirements, but formal matters still need to be addressed and corrected prior to allowance, an Ex parte Quayle action will be sent to applicant indicating allowability of the claim and identifying the necessary corrections.
¶ 15.19.01 Summary Statement of Rejections
The claim stands rejected under [1].
Examiner Note:
- 1. Use as summary statement of rejection(s) in Office action.
- 2. In bracket 1, insert appropriate basis for rejection, i.e., statutory provisions, etc.
¶ 15.58 Claimed Design Is Patentable (Ex parte Quayle Actions)
The claimed design is patentable over the references cited.
¶ 15.72 Quayle Action
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this Office action beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
If it is determined that a rejection of the claim should be given after a reply to a Quayle action, the indication of allowability set forth in the previous action must be withdrawn and prosecution reopened using the following form paragraph:
¶ 15.90 Indication of allowability withdrawn
The indication of allowability set forth in the previous action is withdrawn and prosecution is reopened in view of the following new ground of rejection.
With respect to pro se design applications, the examiner should notify applicant in the first Office action that it may be desirable for applicant to employ the services of a registered patent attorney or agent (practitioner) to prosecute the application. The registered patent practitioner can be a design patent practitioner registered under 37 CFR 11.6(d) or a patent practitioner registered under 37 CFR 11.6(a)–(c). Applicant should also be notified that the U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent. See MPEP § 401. If it appears that patentable subject matter is present and the disclosure of the claimed design complies with the requirements of 35 U.S.C. 112, the examiner should include a copy of the “Guide To Filing A Design Patent Application” with the first Office action and notify applicant that it may be desirable to employ the services of a professional patent draftsperson familiar with design practice to prepare the drawings. Applicant should also be notified that the U.S. Patent and Trademark Office cannot aid in the selection of a draftsperson. The following form paragraph, where appropriate, may be used.
¶ 15.66 Employ Services of Patent Attorney or Agent (Design Application Only)
As the value of a design patent is largely dependent upon the skillful preparation of the drawings and specification, applicant might consider it desirable to employ the services of a registered patent attorney or agent. The U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent.
A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
¶ 15.66.01 Employ Services of Professional Patent Draftsperson (Design Application Only)
As the value of a design patent is largely dependent upon the skillful preparation of the drawings, applicant might consider it desirable to employ the services of a professional patent draftsperson familiar with design practice. The U.S. Patent and Trademark Office cannot aid in the selection of a draftsperson.
Examiner Note:
This form paragraph should only be used in pro se applications where it appears that patentable subject matter is present and the disclosure of the claimed design complies with the requirements of 35 U.S.C. 112.