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Possible Solutions To Patent Office’s New Examination Policy For Design Patents

The Patent Office held its annual Design Day in April 2013 and announced a change in the examination policy of design patents that could have significant impact on practitioner practices and limit thousands of pending applications.

Design patent practitioners routinely amend design drawings from solid lines to dashed lines in order to only claim a part of the design, rather than the overall design.  The USPTO has long permitted this practice and the amendment is “explicitly exempted from being treated as impermissible new matter in MPEP § 1504.04.”

The USPTO’s new policy, however, will no longer permit applicants to amend solid lines to dashed lines, whether it be as part of an initial filing application or as a continuing application, describing the issue as one where the design was “disclosed, but not described.”  Amendments may be permitted on a case-by-case basis, and the applicant must make “appropriate arguments” in order to overcome the rejection.

One possible solution may be to use language in the initially filed specification or additional views that point out what other embodiments are foreseen.  Specific language pointing out features to be disclaimed in alternative embodiments may provide practitioners with “case-by-case arguments.”  See Article.

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