How to avoid USPTO rejections in patent designs

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“Accurate and clear patent drawings strengthen and improve patent applications, helping patent examiners who are already overloaded with applications understand inventions more quickly. “

The Russian writer Ivan Turgenev wrote in 1861: “The drawing shows me at a glance what can be spread over ten pages in a book”. This phrase is especially true in the case of patent designs, which are considered a universal language. The use of drawings is of considerable importance in the case of inventions which are often more easily explained by drawings than by descriptions.

Accurate and clear patent drawings strengthen and improve patent applications, helping patent examiners who are already overloaded with applications understand inventions faster.

In this article, we’ll cover the basics about the importance of patent designs and how we can make designs workable for filing with the USPTO. We’ll also cover some important guidelines to help you avoid unwanted desktop actions.

Why does the USPTO require patent designs?

As you can see in the example below, a blurry image has been converted to line art for a sharper and more precise look.

Designs like this play a vital role in USPTO filings:

  • Clarification of claims: Besides the ornamental aspect, the drawings help to understand the description or the claims of the patent application. Simple, clear, and precise drawings also help educate USPTO examiners in patent infringement cases – clarifying patent holders’ claims and sealing the decision in their favor.
  • Modifications: Sometimes the drawings can even give the applicant a better understanding of his invention, and that is why the drawings can also benefit patent holders to negotiate damages or a settlement and ensure that the drawings are sufficiently descriptive to represent the patent.
  • Prevents violation: This is one of the most important advantages of designs. A precisely prepared design makes the patent understandable and unambiguous, which means that potential infringers will think twice before plagiarizing. And since we know that the sooner an infringement is deterred, the better it is for patent holders.

Guidelines: PCT vs. USPTO

For patent designs, there are several rules followed by different patent offices, including the USPTO and the World Intellectual Property Organization (WIPO), which administers the Patent Cooperation Treaty (PCT).

Some requirements are universal for all patent offices, but there are also differences between the drawing requirements for USPTO and PCT filings.

One of the differences is the size of the paper on which the designs can be submitted:

  • PCT: the PCT only accepts A4 size pages, which is also why it is the most acceptable page size in the world.
  • USPTO:the USPTO allows both letter-size paper or A4-size paper.

Other than that, the following guidelines can help you get your patent designs approved by the USPTO. There are also a few variations in the guidelines for utility drawings versus design:

1. Utility

Images or sketches should not be dropped off directly at the office. There should be good black and white line art, which is highly preferred by almost all court systems, as well as the USPTO.

In addition, when submitting patent designs, the sheets should be free from wrinkles or creases.

Only one side of each sheet should be used.

  • Using a color or grayscale image

Not all patent offices allow the use of photographs in place of black and white line drawings. However, there are some jurisdictions including USPTO, WIPO, Intellectual Property India, etc. where photographs are only allowed in utility patent applications on rare occasions. Photographs can only be used in black and white or in grayscale, if they are the only practical medium for disclosing the invention. For example, cell diagrams, plants, in vivo images, or microorganisms cannot be obtained via line drawings.

Likewise, color photographs may be accepted in utility patent applications if black and white or grayscale is not satisfactory.

However, black and white line drawings are the most preferable and accepted by almost all patent offices.

Incorrect margins are one of the main contributors to application errors leading to USPTO rejections. Drawings should be kept within the following margins: (top: 2.5cm; left side: 2.5cm; right side: 1.5cm; bottom: 1cm).

To make your utility patent drawings explicit and descriptive in accordance with the requirements of the patent application, you can add multiple views from the list:

  • Perspective view
  • Isometric view
  • Plan views
  • Detailed view / enlarged view
  • Partial view
  • Fragmented view
  • Partial sectional view
  • Exploded view
  • Assembled view
  • Numbering of drawings:

After placing the drawings / views, the views must be numbered in Arabic numerals in continuity with the number 1. The view numbers must be preceded by the abbreviation “FIG”. instead of the full text. For example, fig. 1, fig. 2, fig. 3… and so on.

Another common mistake that often leads to office action is the size or height of the font, which should be at least 0.32cm. Any text or reference character smaller than 0.32 cm in size is not allowed.

Make sure the reference characters are correctly placed in the drawings and clearly visible to ensure compliance.

Similar to numbers, all sheets contained in the USPTO application must be numbered in consecutive Arabic numerals – where the numbers must be centered at the top or bottom of the sheet, but must not be placed in the margin. For example, 1/7, 2/7, 3/7… and so on.

It is recommended that each sheet does not present any alteration. It must be clean, neat and must not have any spots, overlaps, crossed lines, erasures, crushings or traces left by a photocopy.

Failure to comply with this rule may be acceptable if the authenticity of the content is not in question and if the requirements of good reproduction are not in question.

  • Other special requirements

Other factors in a design that can lead to the approval or rejection of a patent include:

Drawings with durable, black, sufficiently dense and dark lines and strokes, uniformly thick and well-defined, without coloring.

Cross sections indicated by oblique hatching must be clear. Numbers, letters and reference lines must be crisp and conform to standards.

These were a few guidelines for utility patent drawings and although most of them are common for design patent drawings, there are still few differences in the guidelines for patent drawings. design, such as:

2. Design patents

1. Differentiate between claims: It is essential to differentiate the claimed parts from the rest of the parts.

For example, parts which are not considered to be the claimed design are shown here in dashed lines to distinguish them from those claimed in solid lines. This is also done to make the overall design easier to understand.

2. Types of views: The guidelines suggest that the design claims can be best understood with standard design views such as front, back, right and left sides, top, bottom and a perspective view to clearly show the appearance and shape of the drawing in three-dimensional format.

3. Scaling and projections: Unlike utility patents, design patent applications rely entirely on drawings where scaling and projection of views, as well as parts are really important to maintain consistency of designs and features throughout. together.

4. Surface shading:The USPTO requires that all surfaces of the claimed design be appropriately and adequately shaded: “Shading shall be such as to clearly show the character and outline of all surfaces of any three-dimensional aspect of the design.”

This requirement makes the USPTO’s design drawings more accurate than those of most other countries, which do not include shading or broken lines. This requirement is mandatory for design drawings to be accepted by the USPTO.

Make a checklist

The above guidelines are based on the USPTO Regulations for Utility and Design Drawings when filing provisional and non-provisional patent applications. These simple tips can be useful as a checklist to secure the capabilities of the professional patent illustrator and to avoid unwanted office actions that can dig a hole in your pocket before hiring a professional.

Hemant Kumar

Hemant Kumar is an experienced patent illustrator with over 10 years of experience in the field of patents, trademarks, dressings, technical illustrations and 3D modeling. In his current role at Sagacious IP, he has facilitated Fortune 50 companies, law firms, patent attorneys and inventors, providing patent and trademark design services for hassle-free patent filings.


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