Kevin Prince

In Part I of this article, we examined the top three rejections for design patent applications, which are due to non-enablement, inconsistency, and ambiguousness. The fourth most common reason for rejection of design patents is for objections to the drawing disclosure, which we will discuss here. Objections to the drawings occur when something is incorrectly shown in the drawings, but the drawings are still understood by the Examiner. In the stereo receiver example above, if the bottom plan view was present in the original disclosure but the front elevational view did not show shading on the feet, the Examiner would likely issue an objection, stating that shading was not shown on the front surface of the feet and should be. (If the bottom plan view was not part of the originally filed drawings, then the Examiner would be issuing a Sec. 112 rejection instead of merely an objection since there’s not enough information to understand the shape of the feet and the feet will have to be disclaimed by converting them to broken lines.) Objections to the drawings are usually easy to overcome, but they still must be overcome by submitting replacement sheets. This decreases the efficiency of your operation and increases client costs, so objections are important to minimize by carefully reviewing your drawings before submission.

As one of about 46,000 registered practitioners in the United States, most of us are unfortunately too well acquainted with Section 101, 102, and 103 rejections from the U.S. Patent and Trademark Office (USPTO). But it may be surprising that most rejected design patent applications are not rejected under these sections. Instead, the least favorite number of the design patent practitioner is 112. While Section 112 rejections on utility applications are generally easily overcome, that is often not always the case with such rejections on design applications. Since there are only about 30,000 design applications issued each year, each of the 46,000 registered practitioners handle on average less than one design application per year! So, for those unfamiliar with the quirks of design patent practice, which is most of us, and since design patent applications have a relatively high allowance rate of 84% (see the USPTO Data Visualization Center/Design Data page, it might be tempting to rely on your patent draftsperson to prepare what they think are adequate drawings, copy the mostly boiler-plate specification language, and just file the application. But that can be a costly mistake.