Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
To learn more:
Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
To learn more:
MPEP 2125 – Drawings As Prior Art (1)
Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
To learn more:
MPEP 2138.04 – "Conception" (1)
What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
To learn more:
MPEP 2600 – Optional Inter Partes Reexamination (1)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
MPEP 2666.02 – Correction Of Patent Drawings (1)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
MPEP 500 – Receipt and Handling of Mail and Papers (2)
If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
MPEP 507 – Drawing Review in the Office of Patent Application Processing (2)
If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
Patent Law (15)
What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
To learn more:
According to MPEP 608.02(d), conventional features in patent drawings should be illustrated as follows:
- Use graphical drawing symbols
- Use labeled representations (e.g., a labeled rectangular box)
The MPEP states: However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).
This approach simplifies the drawings while still providing necessary information about conventional elements. It allows the focus to remain on the novel aspects of the invention while acknowledging the presence of standard components.
To learn more:
When illustrating improvements on existing inventions, patent drawings should follow specific guidelines as outlined in MPEP 608.02(d):
- Show the improved portion disconnected from the old structure
- In a separate view, show only enough of the old structure to demonstrate the connection with the improvement
The MPEP cites 37 CFR 1.83(b): When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
This approach helps to clearly distinguish the new, improved elements from the existing technology.
To learn more:
No, sequence listings or tables should not be duplicated in both the drawings and the specification of a patent application. The MPEP 608.02(d) clearly states:
If an application filed under 35 U.S.C. 111 or under 35 U.S.C. 371 includes a sequence listing or a table, such a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification.
This requirement helps to avoid redundancy and potential inconsistencies between the drawings and the specification. Applicants should include sequence listings and tables in the appropriate sections of the specification only.
To learn more:
Showing modified forms of construction in the same figure is objectionable under 37 CFR 1.84(h)(5). The MPEP section 608.02(f) provides a form paragraph (6.22.05) that examiners can use to object to such drawings:
“The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view.”
This objection is made to ensure clarity in patent drawings and to prevent confusion between different forms or modifications of the invention. Applicants are required to submit corrected drawing sheets in compliance with 37 CFR 1.121(d) to address this objection.
To learn more:
To learn more:
No, modifications cannot be shown in broken lines on figures that show another form of the invention in solid lines. This is based on the principle established in Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901). The MPEP section 608.02(f) states:
“Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention.”
This rule ensures clarity and prevents confusion in patent drawings by keeping different forms of the invention visually distinct.
To learn more:
When responding to an objection regarding unlabeled prior art figures, applicants must follow specific procedures for submitting corrected drawings. According to MPEP 608.02(g), the process involves:
- Submitting corrected drawings in compliance with 37 CFR 1.121(d).
- Labeling the replacement sheet(s) as ‘Replacement Sheet’ in the page header, as per 37 CFR 1.84(c).
- Ensuring that the labeling does not obstruct any portion of the drawing figures.
- Designating the prior art figure with a legend such as ‘Prior Art’.
The MPEP states: Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled ‘Replacement Sheet’ in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures.
It’s crucial to follow these instructions carefully to ensure that the objection is resolved and to avoid further complications in the patent prosecution process.
To learn more:
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
When canceling a figure in a patent application, the following procedure should be followed:
- Submit a replacement sheet of drawings without the canceled figure.
- If the canceled figure was the only drawing on the sheet, provide a marked-up copy of the drawing sheet with an annotation showing the cancellation.
- Label the marked-up copy as “Annotated Sheet”.
- Present the annotated sheet in the amendment or remarks section explaining the changes.
- Amend the brief description of the drawings to reflect the change.
This procedure is outlined in MPEP 608.02(t), which states: “If a drawing figure is canceled, a replacement sheet of drawings must be submitted without the figure (see 37 CFR 1.121(d)). If the canceled drawing figure was the only drawing on the sheet, then only a marked-up copy of the drawing sheet including an annotation showing that the drawing has been cancelled is required.”
To learn more:
If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
What are the requirements for submitting photographs as drawings in a patent application?
Photographs are generally not permitted as drawings in patent applications unless they are the only practicable medium for illustrating the claimed invention. According to MPEP 608.02, “The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.” The MPEP further states:
“The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.”
To submit photographs as drawings:
- Ensure they are the only practicable medium for illustrating the invention
- Provide high-quality photographs that clearly show all details
- Submit them on paper that complies with drawing sheet requirements
- Include any necessary mounting on bristol board or equivalent
It’s important to note that color photographs are not ordinarily permitted in utility patent applications.
To learn more:
No, you cannot get your patent application drawings returned. The United States Patent and Trademark Office (USPTO) clearly states in the Manual of Patent Examining Procedure (MPEP) Section 608.02(y) that:
Drawings will not be returned to the applicant.
This policy ensures that the USPTO maintains a complete record of all submitted materials for each patent application. It’s important for applicants to keep copies of all documents, including drawings, submitted to the USPTO.
To learn more:
If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
No, the USPTO does not return annotated sheets submitted for patent drawing corrections. According to MPEP 608.02(v), “Annotated sheets filed by an applicant and used for correction of the drawing will not be returned.” This policy ensures that the USPTO maintains a complete record of all proposed changes to the patent drawings throughout the examination process.
To learn more:
Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
To learn more:
Patent Procedure (15)
What is the significance of drawings in proving conception for a patent?
Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:
“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“
In this context, drawings are significant because:
- They provide a visual representation of the inventor’s mental picture of the invention.
- Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
- Drawings can help prove that the invention was “ready for patenting” at the time of conception.
- They can serve as corroborating evidence to support the inventor’s testimony about conception.
The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.
To learn more:
According to MPEP 608.02(d), conventional features in patent drawings should be illustrated as follows:
- Use graphical drawing symbols
- Use labeled representations (e.g., a labeled rectangular box)
The MPEP states: However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).
This approach simplifies the drawings while still providing necessary information about conventional elements. It allows the focus to remain on the novel aspects of the invention while acknowledging the presence of standard components.
To learn more:
When illustrating improvements on existing inventions, patent drawings should follow specific guidelines as outlined in MPEP 608.02(d):
- Show the improved portion disconnected from the old structure
- In a separate view, show only enough of the old structure to demonstrate the connection with the improvement
The MPEP cites 37 CFR 1.83(b): When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
This approach helps to clearly distinguish the new, improved elements from the existing technology.
To learn more:
No, sequence listings or tables should not be duplicated in both the drawings and the specification of a patent application. The MPEP 608.02(d) clearly states:
If an application filed under 35 U.S.C. 111 or under 35 U.S.C. 371 includes a sequence listing or a table, such a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification.
This requirement helps to avoid redundancy and potential inconsistencies between the drawings and the specification. Applicants should include sequence listings and tables in the appropriate sections of the specification only.
To learn more:
Showing modified forms of construction in the same figure is objectionable under 37 CFR 1.84(h)(5). The MPEP section 608.02(f) provides a form paragraph (6.22.05) that examiners can use to object to such drawings:
“The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view.”
This objection is made to ensure clarity in patent drawings and to prevent confusion between different forms or modifications of the invention. Applicants are required to submit corrected drawing sheets in compliance with 37 CFR 1.121(d) to address this objection.
To learn more:
To learn more:
No, modifications cannot be shown in broken lines on figures that show another form of the invention in solid lines. This is based on the principle established in Ex parte Badger, 1901 C.D. 195, 97 OG 1596 (Comm’r Pat. 1901). The MPEP section 608.02(f) states:
“Modifications may not be shown in broken lines on figures which show in solid lines another form of the invention.”
This rule ensures clarity and prevents confusion in patent drawings by keeping different forms of the invention visually distinct.
To learn more:
When responding to an objection regarding unlabeled prior art figures, applicants must follow specific procedures for submitting corrected drawings. According to MPEP 608.02(g), the process involves:
- Submitting corrected drawings in compliance with 37 CFR 1.121(d).
- Labeling the replacement sheet(s) as ‘Replacement Sheet’ in the page header, as per 37 CFR 1.84(c).
- Ensuring that the labeling does not obstruct any portion of the drawing figures.
- Designating the prior art figure with a legend such as ‘Prior Art’.
The MPEP states: Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled ‘Replacement Sheet’ in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures.
It’s crucial to follow these instructions carefully to ensure that the objection is resolved and to avoid further complications in the patent prosecution process.
To learn more:
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
When canceling a figure in a patent application, the following procedure should be followed:
- Submit a replacement sheet of drawings without the canceled figure.
- If the canceled figure was the only drawing on the sheet, provide a marked-up copy of the drawing sheet with an annotation showing the cancellation.
- Label the marked-up copy as “Annotated Sheet”.
- Present the annotated sheet in the amendment or remarks section explaining the changes.
- Amend the brief description of the drawings to reflect the change.
This procedure is outlined in MPEP 608.02(t), which states: “If a drawing figure is canceled, a replacement sheet of drawings must be submitted without the figure (see 37 CFR 1.121(d)). If the canceled drawing figure was the only drawing on the sheet, then only a marked-up copy of the drawing sheet including an annotation showing that the drawing has been cancelled is required.”
To learn more:
If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.
What are the requirements for submitting photographs as drawings in a patent application?
Photographs are generally not permitted as drawings in patent applications unless they are the only practicable medium for illustrating the claimed invention. According to MPEP 608.02, “The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.” The MPEP further states:
“The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.”
To submit photographs as drawings:
- Ensure they are the only practicable medium for illustrating the invention
- Provide high-quality photographs that clearly show all details
- Submit them on paper that complies with drawing sheet requirements
- Include any necessary mounting on bristol board or equivalent
It’s important to note that color photographs are not ordinarily permitted in utility patent applications.
To learn more:
No, you cannot get your patent application drawings returned. The United States Patent and Trademark Office (USPTO) clearly states in the Manual of Patent Examining Procedure (MPEP) Section 608.02(y) that:
Drawings will not be returned to the applicant.
This policy ensures that the USPTO maintains a complete record of all submitted materials for each patent application. It’s important for applicants to keep copies of all documents, including drawings, submitted to the USPTO.
To learn more:
If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.
No, the USPTO does not return annotated sheets submitted for patent drawing corrections. According to MPEP 608.02(v), “Annotated sheets filed by an applicant and used for correction of the drawing will not be returned.” This policy ensures that the USPTO maintains a complete record of all proposed changes to the patent drawings throughout the examination process.
To learn more:
Generally, the proportions of features in patent drawings cannot be relied upon as evidence unless the drawings are explicitly stated to be to scale. The MPEP 2125 states:
“When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.”
This principle was reinforced in the case of Hockerson-Halberstadt, Inc. v. Avia Group Int’l, where the court held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
However, the MPEP does note that the description of the article pictured, in combination with the drawings, can be relied on for what they would reasonably teach one of ordinary skill in the art.
To learn more: