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TAKEAWAY: The USPTO is seeking comments on proposed examination guidelines for written description in design applications. Comments must be submitted and received by June 14, 2016.

The written description requirement states that a patent “shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same” (35 U.S.C. §112(a)). In other words, a patent application must show that the inventors were in possession of the claimed invention at the time the application was filed. Both utility and design patents are subject to this requirement. The “description” in a design patent is set forth by the drawings, and the criteria for sufficient written description of a drawing are not well defined.

By convention, solid lines in design drawings delineate claimed subject matter, and broken lines (dashed, dash-dot, dotted) show environmental structure rather than part of the claimed design. Much of the uncertainty in the written description requirement relates to amendments and continuation applications, where an applicant may vary the claimed design by converting solid lines to broken lines or vice versa. For example, the applicant may want to disclaim a particular feature (e.g., a cap of a bottle) by converting lines that were originally solid to dashed. In some cases, a question can arise as to whether the inventors had possession of the amended design, such as claiming the top and bottom shelves of a bookcase and disclaiming the structure in between that connects the shelves together.

Following negative feedback to a proposed factor-based analysis, the USPTO published a notice on April 15, 2016, requesting public comments on a different approach based on general written description principles provided.  In this proposed approach, the examiner would adopt the perspective of an “ordinary designer” and ask whether the application “reasonably convey[s]” to that ordinary designer that the inventor had possession of the claimed design when originally filed. The examiner also would consider parts of the application other than the drawings, such as the title or any statements on intended use, as part of the analysis. The notice also requests examples to illustrate how this approach “or any suggested approach” would be applied, suggesting that the USPTO is open to alternative proposals. Comments must be submitted and received by June 14, 2016.