MPEP § 1503 — MPEP § 1503
Current through: 2022-07-01

1503-Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1500 

 Section 1503 
 

 
 
 
 
 
 1503 Elements of a Design Patent Application Filed Under 35 U.S.C.
 chapter 16 [R-08.2017]
 

 This section sets forth the elements of a design application
 filed under 35 U.S.C. chapter 16. Elements of an international design application are set
 forth in MPEP
 Chapter 2900 , though reference to international design
 applications that designate the United States is included in this section where
 appropriate. 
 

 A design patent application has essentially the elements required of an
 application for a utility patent (see Chapter 600 ). The arrangement of the
 elements of a design patent application filed under 35 U.S.C. chapter 16 and the sections
 of the specification are as specified in 37 CFR 1.154 .
 

 A claim in a specific form is a necessary element of a design patent
 application. See MPEP §
 1503.01, subsection III .
 

 A drawing is an essential element of a design patent application. See
 MPEP §
 1503.02 for requirements for drawings.
 

 
 1503.01 Specification [R-01.2024]

 
 37 CFR 1.153 Title, description and claim, oath or declaration (for applications filed on
 or after September 16, 2012). 

 (a) The title of the design must designate the
 particular article. No description, other than a reference to the drawing, is
 ordinarily required. The claim shall be in formal terms to the ornamental design for
 the article (specifying name) as shown, or as shown and described. More than one
 claim is neither required nor permitted. 
 

 (b) The inventor's oath or declaration must comply with
 the requirements of § 1.63 , or comply with the
 requirements of § 1.64 for a substitute statement. 
 

 *****

 

 
 37 CFR 1.153 (pre-AIA) Title, description and claim, oath or declaration (for applications filed
 prior to September 16, 2012). 

 (a) The title of the design must designate the particular article.
 No description, other than a reference to the drawing, is ordinarily required. The
 claim shall be in formal terms to the ornamental design for the article (specifying
 name) as shown, or as shown and described. More than one claim is neither required
 nor permitted.
 

 (b) The oath or declaration required of the applicant must comply
 with § 1.63 .
 

 *****

 

 
 37 CFR 1.154 Arrangement of application elements in a design application. 

 
 (a) The elements of the design application, if applicable, should
 appear in the following order:
 
 (1) Design application transmittal form.

 (2) Fee transmittal form.

 (3) Application data sheet (see §
 1.76 ).
 

 (4) Specification.

 (5) Drawings or photographs.

 (6) The inventor's oath or declaration (see
 §
 1.153(b) ).
 

 
 

 (b) The specification should include the following sections in
 order:
 
 (1) Preamble, stating the name of the applicant, title of
 the design, and a brief description of the nature and intended use of the
 article in which the design is embodied.
 

 (2) Cross-reference to related applications (unless included
 in the application data sheet).
 

 (3) Statement regarding federally sponsored research or
 development.
 

 (4) Description of the figure or figures of the drawing.

 (5) Feature description.

 (6) A single claim.

 
 

 (c) The text of the specification sections defined in paragraph
 (b) of this section, if applicable, should be preceded by a section heading in
 uppercase letters without underlining or bold type.
 

 
 

 ¶ 15.05 Design Patent Specification Arrangement (Ch. 16 Design
 Application)
 

 The following order or arrangement
 should be observed in framing a design patent specification:
 

 
 (1) Preamble, stating name of the
 applicant, title of the design, and a brief description of the nature and intended
 use of the article in which the design is embodied.
 

 (2) Cross-reference to related
 applications.
 

 (3) Statement regarding federally
 sponsored research or development.
 

 (4) Description of the figure or
 figures of the drawing.
 

 (5) Feature
 description.
 

 (6) A single
 claim.
 

 
 Examiner Note:

 Do not use this form paragraph in an
 international design application.
 

 
 I. PREAMBLE AND TITLE A preamble, if included, should state the name of the applicant, the
 title of the design, and a brief description of the nature and intended use of the
 article in which the design is embodied ( 37 CFR 1.154 ).
 

 The title of the design identifies the article in which the design
 is embodied by the name generally known and used by the public and may contribute to
 defining the scope of the claim. See MPEP § 1504.04 , subsection I.A. See
 Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d
 1334, 1340, 2019 USPQ2d 341902 (Fed. Cir. 2019) (“[I]dentifying the article of
 manufacture serves to notify the public about the general scope of protection
 afforded by the design patent”). The title may be directed to the entire article
 embodying the design while the claimed design shown in full lines in the drawings may
 be directed to only a portion of the article. However, the title may not be directed
 to less than the claimed design shown in full lines in the drawings. A title
 descriptive of the actual article aids the examiner in developing a complete field of
 search of the prior art and further aids in the proper assignment of new applications
 to the appropriate class, subclass, and patent examiner, and the proper
 classification of the patent upon allowance of the application. It also helps the
 public in understanding the nature and use of the article embodying the design after
 the patent has been issued. For example, a broad title such as “Adapter Ring”
 provides little or no information as to the nature and intended use of the article
 embodying the design. If a broad title is used, the description of the nature and
 intended use of the design may be incorporated into the preamble.
 

 When a design is embodied in an article having multiple functions or
 comprises multiple independent parts or articles that interact with each other, the
 title must clearly define them as a single entity, for example, combined or
 combination, set, pair, unit assembly.
 

 Since 37 CFR 1.153 requires that the
 title must designate the particular article, and since the claim must be in formal
 terms to the “ornamental design for the article (specifying name) as shown, or as
 shown and described,” the title and claim must correspond. When the article named in
 the title does not correspond to the article named in the claim, the examiner should
 object to the inconsistency under 37 CFR 1.153 and require
 correction.
 

 However, it is emphasized that, under 35 U.S.C.
 112(b) , the claim defines “the subject matter which
 the inventor or joint inventor regards as the invention” (emphasis
 added); (or for applications filed prior to September 16, 2012, under the second
 paragraph of pre-AIA 35 U.S.C. 112 the claim defines "the subject matter
 which the applicant regards as his invention"), that is, the ornamental design to be
 embodied in or applied to an article. Thus, the examiner should afford the applicant
 substantial latitude in the language of the title/claim. The examiner should require
 amendment of the title/claim if the language is clearly misdescriptive, inaccurate,
 or unclear (i.e., the language would result in a rejection of the claim under
 35
 U.S.C. 112(b) , (or for applications filed prior to September
 16, 2012, pre-AIA
 35 U.S.C. 112 , second paragraph); see MPEP § 1504.04 ,
 subsection II). The use of language such as “or the like” or “or similar article” in
 the title when directed to the environment of the article embodying the design will not be the basis for a
 rejection of the claim under 35 U.S.C. 112(b) , (or for
 applications filed prior to September 16, 2012, 35 U.S.C. 112 , second paragraph).
 However, such language is indefinite when it refers to the
 area of articles defining the subject matter of the design. An acceptable title would
 be “door for cabinets, houses, or the like,” while the title “door or the like” would
 be unacceptable and the claim will be rejected under 35 U.S.C.
 112(b) , (or for applications filed prior to September 16, 2012,
 pre-AIA 35
 U.S.C. 112 , second paragraph). Ex parte
 Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). See also
 MPEP §
 1504.04 ; subsection II.
 

 Amendments to the title, whether directed to the article in which
 the design is embodied or its environment, must have antecedent basis in the original
 disclosure and may not introduce new matter. Ex parte Strijland, 
 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title is
 directed to the environment in which the design is used and the amendment would
 introduce new matter, the examiner should object to the amendment under
 35 U.S.C.
 132 . If an amendment to the title is directed to the article in
 which the design is embodied and the amendment would introduce new matter, in
 addition to the objection under 35 U.S.C. 132 , the claim must be
 rejected under 35 U.S.C. 112(a) (or for
 applications filed prior to September 16, 2012, the first paragraph of
 pre-AIA 35
 U.S.C. 112 ).
 

 Any amendment to the language of the title should also be made at
 each occurrence thereof throughout the application, except in the oath or
 declaration. If the title of the article is not present in the original figure
 descriptions, it is not necessary to incorporate the title into the descriptions as
 part of any amendment to the language of the title.
 

 The practice set forth above regarding the title of the
 design is generally applicable to international design applications designating the
 United States. The requirement for a title in an international design application
 designating the United States is set forth in 37 CFR
 1.1067 and corresponds to the requirement set forth in
 37 CFR
 1.153 . See MPEP §
 2920.04(a) .
 

 ¶ 15.05.01 Title of Design Invention

 The title of a design must designate the name of the article in which the
 design is embodied or applied to. In addition, the title must correspond with the claim. See
 MPEP §
 1503.01 and 37 CFR 1.153 or MPEP §
 2920.04(a) and 37 CFR 1.1067 .
 

 

 ¶ 15.59 Amend Title

 For [1] , the title, and each occurrence of the language of
 the title, [2] amended throughout the application, original oath or declaration
 excepted, to read: [3] 

 Examiner Note:
 
 1. In bracket 1, insert reason.

 2. In bracket 2, insert --should be-- or --has been--.

 3. When the applicant has furnished the application title,
 applicant's authorization is required to make an examiner’s amendment to the application
 title. See MPEP §
 1302.04 . Where the changes are made by examiner's amendment,
 this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 . If an extension of time is
 required, use form paragraph 13.02.02 instead of form paragraphs
 13.02 and
 13.02.01 . 
 
 
 
 II. DESCRIPTION No description of the design in the specification beyond a brief
 description of the drawing is generally necessary, since as a rule the illustration
 in the drawing views is its own best description. In re Freeman, 
 23 App. D.C. 226 (App. D.C. 1904). While not required, such a description is not
 prohibited and may be incorporated, at applicant’s option, into the specification or
 may be provided in a separate paper. Ex parte Spiegel, 1919 C.D.
 112, 268 O.G. 741 (Comm’r Pat. 1919). Descriptions of the figures are not required to
 be written in any particular format, however, if they do not describe the views of
 the drawing clearly and accurately, the examiner should object to the unclear and/or
 inaccurate descriptions and suggest language which is more clearly descriptive of the
 views. 
 

 
 (A) In addition to the figure descriptions, the following types of
 statements are permissible in the specification:
 

 
 
 (1) Description of the appearance of portions of the claimed
 design which are not illustrated in the drawing disclosure. Such a
 description, if provided, must be in the design application as originally
 filed, and may not be added by way of amendment after the filing of the
 application as it would be considered new matter.
 

 (2) Description disclaiming portions of the article not
 shown in the drawing as forming no part of the claimed design.
 

 (3) Statement indicating the purpose of broken lines in the
 drawing, for example, environmental structure or boundaries that form no
 part of the design to be patented.
 

 (4) Description denoting the nature and intended use of the
 claimed design, if not included in the preamble pursuant to
 37
 CFR 1.154 and MPEP
 § 1503.01 , subsection I.
 

 It is the policy of the Office to attempt
 to resolve questions about the nature and intended use of the claimed
 design prior to examination by making a telephone inquiry at the time of
 initial docketing of the application. This will enable the application to
 be properly classified and docketed to the appropriate examiner and to be
 searched when the application comes up for examination in its normal
 course without the need for a rejection under 35 U.S.C.
 112 prior to a search of the prior art. Explanation
 of the nature and intended use of the article may be added to the
 specification provided it does not constitute new matter. It may
 alternately, at applicant’s option, be submitted in a separate paper
 without amendment of the specification
 

 (5) A “characteristic features” statement describing a
 particular feature of the design that is considered by applicant to be a
 feature of novelty or nonobviousness over the prior art
 ( 37
 CFR 1.71(c) ).
 

 This type of statement may not serve as a basis for
 determining patentability by an examiner. In determining the
 patentability of a design, it is the overall appearance of the claimed
 design which must be taken into consideration. In re
 Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In
 re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).
 Furthermore, the inclusion of such a statement in the specification is at
 the option of applicant and will not be suggested by the examiner.
 

 
 

 
 ¶ 15.47 Characteristic Feature Statement

 A “characteristic features” statement describing a particular feature of
 novelty or nonobviousness in the claimed design may be permissible in the specification. Such
 a statement should be in terms such as “The characteristic feature of the design resides in
 [1] ,” or if combined with one of the Figure descriptions, in terms such as
 “the characteristic feature of which resides in [2] .” While consideration of the
 claim goes to the total or overall appearance, the use of a “characteristic feature” statement
 may serve later to limit the claim ( McGrady v. Aspenglas Corp., 487 F.
 Supp. 859, 208 USPQ 242 (S.D.N.Y. 1980)).
 

 Examiner Note:

 In brackets 1 and 2, insert brief but accurate description of the feature of novelty or nonobviousness of the claimed design.

 

 ¶ 15.47.01 Feature Statement Caution

 The inclusion of a feature statement in the specification is noted. However, the patentability of the claimed design is not
 based on the specified feature but rather on a comparison of the overall appearance of the design with the prior art. In re Leslie , 547 F.2d 116, 192 USPQ 427 (CCPA 1977).
 

 

 
 (B) The following types of statements are not
 permissible in the specification:
 

 
 
 (1) A disclaimer statement directed to any portion of the
 claimed design that is shown in solid lines in the drawings is not
 permitted in the specification of an issued design patent. However, the
 disclaimer statement may be included in the design application as
 originally filed to provide antecedent basis for a future amendment. See
 Ex parte Remington, 114 O.G. 761, 1905 C.D. 28
 (Comm’r Pat. 1905); In re Blum, 374 F.2d 904, 153 USPQ
 177 (CCPA 1967). See MPEP §
 2909.02 regarding disclaimer statements in
 international design applications.
 

 (2) Statements which describe or suggest other embodiments
 of the claimed design which are not illustrated in the drawing
 disclosure, except one that is a mirror image of that shown or has a
 shape and appearance that would be evident from the one shown, are not
 permitted in the specification of an issued design patent. However, such
 statements may be included in the design application as originally filed
 to provide antecedent basis for a future amendment. In addition,
 statements which attempt to broaden the scope of the claimed design
 beyond that which is shown in the drawings are not permitted.
 

 (3) Statements describing matters that are directed to
 function or are unrelated to the design. 
 

 
 

 
 ¶ 15.41 Functional, Structural Features Not Considered

 Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an
 article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in
 design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications.
 

 

 ¶ 15.46.01 Impermissible Descriptive Statement

 The descriptive statement included in
 the specification is impermissible because [1] . See MPEP §
 1503.01 , subsection II. Therefore, the description should be
 canceled as any description of the design in the specification, other than a brief description
 of the drawing, is generally not necessary, since as a general rule, the illustration in the
 drawing views is its own best description. 
 

 Examiner Note:

 In bracket 1, insert the reason why the descriptive statement is improper.

 

 ¶ 15.60 Amend All Figure Descriptions

 For [1] , the figure descriptions [2] amended to read: [3] 

 Examiner Note:
 
 1. In bracket 1, insert reason.

 2. In bracket 2, insert --should be-- or --have been-.

 3. In bracket 3, insert amended text.

 4. Applicant's authorization is required to make an examiner’s
 amendment to the figure descriptions, and this form paragraph should be preceded by form
 paragraphs 13.02 and 13.02.01 . See MPEP § 1302.04 . If an
 extension of time is required, use form paragraph 13.02.02 instead of form paragraphs
 13.02 and
 13.02.01 . 
 
 
 

 ¶ 15.61 Amend Selected Figure Descriptions

 For [1] , the description(s) of Fig(s). [2] [3] amended to read: [4] 

 Examiner Note:
 
 1. In bracket 1, insert reason.

 2. In bracket 2, insert selected Figure descriptions.

 3. In bracket 3, insert --should be-- or --have been-.

 4. In bracket 4, insert amended text.

 5. Applicant's authorization is required to make an examiner's
 amendment to the figure descriptions, and this form paragraph should be preceded by form
 paragraphs 13.02 and 13.02.01 . See MPEP § 1302.04 . If an
 extension of time is required, use form paragraph 13.02.02 instead of form paragraphs
 13.02 and
 13.02.01 . 
 
 
 

 ¶ 15.61.01 Amend Specification to Add Reference to Color Drawing(s)/ Photograph(s) (Ch. 16
 Design Application)
 

 The application contains at least one color
 drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color
 drawings/photographs in design applications, the specification [1] amended
 to include the following language as the first paragraph of the brief description of the
 drawings section:
 

 
 The file of this patent contains at least one drawing/photograph
 executed in color. Copies of this patent with color drawing(s)/photograph(s) will be
 provided by the Office upon request and payment of the necessary fee.
 

 
 Examiner Note:
 
 1. Do not use this form paragraph in an
 international design application.
 

 2. In bracket 1, insert --must be-- or
 --has been--.
 
 
 
 III. DESIGN CLAIM The requirements for utility claims specified in 37 CFR 1.75 do
 not apply to design claims. Instead, the form and content of a claim in a design
 patent application filed under 35 U.S.C. chapter 16 is set forth in 37 CFR
 1.153 :
 

 
 37 CFR 1.153 ... claim... 

 
 (a) ... The claim shall be in formal terms to the ornamental
 design for the article (specifying name) as shown, or as shown and
 described. More than one claim is neither required nor permitted.
 

 
 *****

 

 A design patent application may only include a single claim. The
 single claim should normally be in formal terms to “The ornamental design for (the
 article which embodies the design or to which it is applied) as shown.” The
 description of the article in the claim should be consistent in terminology with the
 title of the invention. See MPEP § 1503.01 , subsection I.
 

 When the specification includes a proper descriptive statement of
 the design (see MPEP
 § 1503.01 , subsection II), or a proper showing of modified
 forms of the design or other descriptive matter has been included in the
 specification, the words “and described” must be added to the claim following the
 term “shown”; i.e., the claim must read “The ornamental design for (the article which
 embodies the design or to which it is applied) as shown and described.” 
 

 Full lines in the drawing show the claimed design. Broken lines are
 used for numerous purposes. Under some circumstances, broken lines are used to
 illustrate the claimed design (i.e., stitching and fold lines). Broken lines are not
 permitted for the purpose of identifying portions of the claimed design which are
 immaterial or unimportant. See In re Blum, 374 F.2d 904, 907, 153
 USPQ 177, 180 (CCPA 1967) (there are “ no portions of a
 design which are ‘immaterial’ or ‘not important.’ A design is a unitary
 thing and all of its portions are material in that they contribute to the appearance
 which constitutes the design.”). See also MPEP § 1503.02 , subsection III.
 

 The form and content of a claim in an international
 design application designating the United States is set forth in 37 CFR
 1.1025 , which mirrors the claim requirements set forth in
 37 CFR
 1.153 . See also MPEP Chapter
 2900 for international design applications. 
 

 ¶ 15.62 Amend Claim “As Shown”

 For proper form ( 37 CFR 1.153 or 37 CFR 1.1025 ),
 the claim [1] amended to read: “ [2] claim: The ornamental design for
 [3] as shown.”
 

 Examiner Note:
 
 1. In bracket 1, insert --must be--
 or --has been--.
 

 2. In bracket 2, insert --I-- or
 --We--.
 

 3. In bracket 3, insert title of
 the article in which the design is embodied or applied.
 
 
 

 ¶ 15.63 Amend Claim “As Shown and Described”

 For proper form ( 37 CFR 1.153 or 37 CFR 1.1025 ),
 the claim [1] amended to read: “ [2] claim: The ornamental design for
 [3] as shown and described.”
 

 Examiner Note:
 
 1. In bracket 1, insert --must be--
 or --has been--.
 

 2. In bracket 2, insert --I-- or
 --We--.
 

 3. In bracket 3, insert title of
 the article in which the design is embodied or applied.
 
 
 

 ¶ 15.64 Addition of “And Described” to Claim

 Because of [1] -- and described -- [2] added to the claim after “shown.”
 

 Examiner Note:
 
 1. In bracket 1, insert reason.

 2. In bracket 2, insert --must be-- or --has been--.
 
 

 

 
 1503.02 Drawing [R-01.2024]

 
 37 CFR 1.152 Design drawings. 

 The design must be represented by a drawing that complies with the
 requirements of §
 1.84 and must contain a sufficient number of views to
 constitute a complete disclosure of the appearance of the design. Appropriate and
 adequate surface shading should be used to show the character or contour of the
 surfaces represented. Solid black surface shading is not permitted except when used
 to represent the color black as well as color contrast. Broken lines may be used to
 show visible environmental structure, but may not be used to show hidden planes and
 surfaces that cannot be seen through opaque materials. Alternate positions of a
 design component, illustrated by full and broken lines in the same view are not
 permitted in a design drawing. Photographs and ink drawings are not permitted to be
 combined as formal drawings in one application. Photographs submitted in lieu of ink
 drawings in design patent applications must not disclose environmental structure but
 must be limited to the design claimed for the article.
 

 

 Every design patent application must include either a drawing or a
 photograph of the claimed design. As the drawing or photograph constitutes the entire
 visual disclosure of the claim, it is of utmost importance that the drawing or
 photograph be clear and complete, and that nothing regarding the design sought to be
 patented is left to conjecture.
 

 When inconsistencies are found among the views, the examiner should
 object to the drawings and request that the views be made consistent. Ex parte
 Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978); Hadco
 Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182,
 165 USPQ 496, 503 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d
 1265, 174 USPQ 358 (3d Cir. 1972). When the inconsistencies are of such magnitude that
 the overall appearance of the design is unclear, the claim should be rejected under
 35 U.S.C.
 112(a) and (b) , (or for applications filed
 prior to September 16, 2012, pre-AIA 35 U.S.C. 112 , first and
 second paragraphs), as nonenabling and indefinite. See MPEP § 1504.04 ,
 subsection I.A.
 

 ¶ 15.05.03 Drawing/Photograph Disclosure Objected To

 The drawing/photograph disclosure is
 objected to because [1]. 

 Examiner Note:

 In bracket 1, insert the reason for
 the objection.
 

 

 ¶ 15.05.04 Replacement Drawing Sheets Required

 Corrected drawing sheets in compliance with 37 CFR 1.121(d) 
 are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet
 should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being
 amended. The figure or figure number of an amended drawing should not be labeled as amended. If a drawing figure is to be
 canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must
 be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency.
 Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing
 sheet are canceled, a replacement sheet is not required. A marked-up
 copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing
 sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each
 drawing sheet submitted after the filing date of an application must be labeled in the top margin as either 
 "Replacement Sheet"
 
 
 or 
 "New Sheet"
 
 
 pursuant to 37 CFR 1.121(d) 
 . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective
 action in the next Office action.
 

 

 ¶ 15.05.05 Drawing Correction Required Prior to Appeal

 Any appeal of the design claim must include the correction of the drawings approved by the examiner in accordance with Ex parte Bevan , 142 USPQ 284 (Bd. App. 1964).
 

 Examiner Note:

 This form paragraph can be used in a FINAL rejection where an outstanding requirement for a drawing correction has not been
 satisfied.
 

 

 ¶ 15.07 Avoidance of New Matter

 When preparing new or replacement drawings, be careful to avoid
 introducing new matter. New matter is prohibited by
 35 U.S.C.
 132 and 37 CFR 1.121(f). 

 

 Form paragraph 15.48 may be used to notify applicant
 of the necessity for good drawings.
 

 ¶ 15.48 Necessity for Good Drawings

 The necessity for good drawings in a design patent application cannot be
 overemphasized. As the drawing constitutes the whole disclosure of the design, it is of
 utmost importance that it be so well executed both as to clarity of showing and
 completeness, that nothing regarding the design sought to be patented is left to conjecture.
 An insufficient drawing may be fatal to validity ( 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first
 paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the
 effective filing date of the claimed invention in a continuing application.
 

 

 In addition to the criteria set forth in 37 CFR
 1.81 - 1.88 , design drawings must also
 comply with 37 CFR
 1.152 as follows:
 

 I. VIEWS The drawings or photographs should contain a sufficient number of
 views to disclose the complete appearance of the design claimed, which may include
 the front, rear, top, bottom and sides. Where three-dimensional aspects of a design
 are not claimed, a single plan- or planar-view may be sufficient to adequately
 disclose the claimed design. For example, in In re Maatita, 900
 F.3d. 1369, 1378-1379, 127 USPQ2d 1640 (Fed. Cir. 2018), the Federal Circuit held
 that a claim to an ornamental design for a shoe bottom satisfied the enablement and
 definiteness requirements of 35 U.S.C. 112 , where the scope of
 the claimed design was capable of being understood from a single, two-dimensional,
 plan-view. The Federal Circuit distinguished the design for a rug or a placemat,
 which “is capable of being viewed and understood in two-dimensions through a plan- or
 planar-view illustration," from the design for an entire shoe or teapot, which is
 “inherently three-dimensional and could not be adequately disclosed with a single,
 plan- or planar-view drawing.” Maatita, 900 F.3d at 1378. See also
 MPEP §
 1504.04 , subsection I.
 

 Perspective views are suggested and may be submitted
 to clearly show the appearance of three dimensional designs. If a perspective view is
 submitted, the surfaces shown would normally not be required to be illustrated in
 other views if these surfaces are clearly understood and fully disclosed in the
 perspective.
 

 Views that are merely duplicative of other views of the design or
 that are flat and include no surface ornamentation may be omitted from the drawing if
 the specification makes this explicitly clear. See MPEP § 1503.01 ,
 subsection II. For example, if the left and right sides of a design are identical or
 a mirror image, a view should be provided of one side and a statement made in the
 drawing description that the other side is identical or a mirror image. If the design
 has a flat bottom, a view of the bottom may be omitted if the specification includes
 a statement that the bottom is flat and devoid of surface ornamentation. The term
 “unornamented” should not be used to describe visible surfaces which include
 structure that is clearly not flat. Philco Corp. v. Admiral Corp., 
 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961).
 

 Sectional views presented solely for the purpose of showing the
 internal construction or functional/ mechanical features are unnecessary and may lead
 to confusion as to the scope of the claimed design. The examiner should object to
 such views and require their cancellation. Ex parte Tucker, 1901
 C.D. 140, 97 O.G. 187 (Comm’r Pat. 1901); Ex parte Kohler, 1905
 C.D. 192, 116 O.G. 1185 (Comm’r Pat. 1905). However, where the exact contour or
 configuration of the exterior surface of a claimed design is not apparent from the
 views of the drawing, and no attempt is made to illustrate features of internal
 construction, a sectional view may be included to clarify the shape of said design.
 Ex parte Lohman, 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat.
 1912). When a sectional view is added during prosecution, the examiner must determine
 whether there is antecedent basis in the original disclosure for the material shown
 in hatching in the sectional view 37 CFR 1.84(h)(3) and
 MPEP
 § 608.02 .
 

 II. SURFACE SHADING While surface shading is not required under 37 CFR 1.152 ,
 it may be necessary in particular cases to shade the figures to show clearly the
 character and contour of all surfaces of any 3-dimensional aspects of the design.
 Surface shading is also necessary to distinguish between any open and solid areas of
 the article. However, surface shading should not be used on unclaimed subject matter,
 shown in broken lines, to avoid confusion as to the scope of the claim.
 

 Lack of appropriate surface shading in the drawing as filed may
 render the design nonenabling and indefinite under 35 U.S.C.
 112(a) and (b) , (or for applications filed
 prior to September 16, 2012, pre-AIA 35 U.S.C. 112 , first and
 second paragraphs). Additionally, if the surface shape is not evident from the
 disclosure as filed, the addition of surface shading after filing may comprise new
 matter. Solid black surface shading is not permitted except when used to represent
 the color black as well as color contrast. Oblique line shading must be used to show
 transparent, translucent and highly polished or reflective surfaces, such as a
 mirror. Contrast in materials may be shown by using line shading in one area and
 stippling in another. By using this technique, the claim will broadly cover
 contrasting surfaces unlimited by colors. The claim would not be limited to specific
 material either, as long as the appearance of the material does not patentably depart
 from the visual appearance illustrated in the drawing.
 

 III. BROKEN LINES The two most common uses of broken lines are to disclose the
 environment related to the claimed design and to define the bounds of the claim.
 Structure that is not part of the claimed design, but is considered necessary to show
 the environment in which the design is associated, may be represented in the drawing
 by broken lines. This includes any portion of an article in which the design is
 embodied, or applied to, that is not considered part of the claimed design. See
 In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Unclaimed
 subject matter may be shown in broken lines for the purpose of illustrating the
 environment in which the article embodying the design is used. Unclaimed subject
 matter must be described as forming no part of the claimed design or of a specified
 embodiment thereof. A boundary line may be shown in broken lines if it is not
 intended to form part of the claimed design. Applicant may choose to define the
 bounds of a claimed design with broken lines when the boundary does not exist in
 reality in the article embodying the design. It would be understood that the claimed
 design extends to the boundary but does not include the boundary. When a boundary
 line is introduced via amendment or in a continuation application, the introduction
 of the boundary line must comply with the written description requirement of
 35
 U.S.C. 112(a) (or for applications filed prior to September 16,
 2012, pre-AIA 35
 U.S.C. 112 , first paragraph). See In re
 Owens, 710 F.3d 1362, 1366-67, 106 USPQ2d 1248, 1251 (Fed. Cir. 2013).
 For example, unclaimed boundary lines should satisfy the written description
 requirement where they make explicit a boundary that already exists, but was
 unclaimed in the original disclosure. See Owens, 710 F.3d at
 1368-69, 106 USPQ2d at 1252. Where no boundary line is shown in a design application
 as originally filed, but it is clear from the design specification that the boundary
 of the claimed design is a straight broken line connecting the ends of existing full
 lines defining the claimed design, applicant may amend the drawing(s) to add a
 straight broken line connecting the ends of existing full lines defining the claimed
 subject matter where such amendment complies with the written description requirement
 of 35
 U.S.C. 112(a) (or for applications filed prior to September 16,
 2012, pre-AIA 35
 U.S.C. 112 , first paragraph). Additionally, any broken line
 boundary other than a straight broken line may constitute new matter prohibited by
 35 U.S.C.
 132 and 37 CFR 1.121(f) . 
 

 However, broken lines are not permitted for the purpose of
 indicating that a portion of an article is of less importance in the design. See
 In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967). Broken
 lines may not be used to show hidden planes and surfaces which cannot be seen through
 opaque materials. The use of broken lines indicates that the environmental structure
 or the portion of the article depicted in broken lines forms no part of the design,
 and is not to indicate the relative importance of parts of a design. 
 

 In general, when broken lines are used, they should not intrude upon
 or cross the showing of the claimed design and should not be of heavier weight than
 the lines used in depicting the claimed design. When broken lines cross over the full
 line showing of the claimed design and are defined as showing environment, it is
 understood that the surface which lies beneath the broken lines is part of the
 claimed design. When the broken lines crossing over the design are defined as
 boundaries, it is understood that the area within the broken lines is not part of the
 claimed design. Therefore, when broken lines are used which cross over the full line
 showing of the design, it is critical that the description of the broken lines in the
 specification explicitly identifies their purpose so that the scope of the claim is
 clear. As it is possible that broken lines with different purposes may be included in
 a single application, the description must make a visual distinction between the two
 purposes; such as --The broken lines immediately adjacent the shaded areas represent
 the bounds of the claimed design while all other broken lines are directed to
 environment and are for illustrative purposes only; the broken lines form no part of
 the claimed design.-- Where a broken line showing of environmental structure must
 necessarily cross or intrude upon the representation of the claimed design and
 obscures a clear understanding of the design, such an illustration should be included
 as a separate figure in addition to the other figures which fully disclose the
 subject matter of the design. Further, surface shading should not be used on
 unclaimed subject matter shown in broken lines to avoid confusion as to the scope of
 the claim.
 

 The following form paragraphs may be used, where appropriate, to
 notify applicant regarding the use of broken lines in the drawings.
 

 ¶ 15.50 Use of Broken Lines for Indicating Unimportant Features Not
 Permitted
 

 The ornamental design which is being
 claimed must be shown in solid lines in the drawing. Broken lines for the purpose of
 indicating unimportant or immaterial features of the design are not permitted. There are no
 portions of a claimed design which are immaterial or unimportant. See In re
 Blum , 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn ,
 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
 

 

 ¶ 15.50.01 Use of Broken Lines in Drawing (Ch. 16 Design
 Application)
 

 Environmental structure may be
 illustrated by broken lines in the drawing if clearly designated as environment in the
 specification. See 37 CFR
 1.152 and MPEP § 1503.02 , subsection III.
 

 Examiner Note:

 Do not use this form paragraph in an international
 design application.
 

 

 ¶ 15.50.02 Description of Broken Lines (Ch. 16 Design
 Application)
 

 A statement similar to the following
 should be used to describe the broken lines on the drawing ( MPEP § 1503.02 , subsection
 III):
 

 -- The broken line showing of
 [1] is for the purpose of illustrating [2] and forms no part of
 the claimed design. --
 

 A statement similar to the one above
 [3] inserted in the specification preceding the claim.
 

 Examiner Note:
 
 1. Do not use this form paragraph in an international
 design application.
 

 2. In bracket 1, insert name of
 structure.
 

 3. In bracket 2, insert --portions
 of the “article”-- or --environmental structure--.
 

 4. In bracket 3, insert --must be--
 or --has been--.
 
 
 

 ¶ 15.50.04 Proper Drawing Disclosure With Use of Broken Lines

 Where superimposed broken lines
 showing environmental structure obscure the full line disclosure of the claimed design, a
 separate figure showing the broken lines must be included in the drawing in addition to the
 figures showing only claimed subject matter, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.
 112 , first paragraph.
 

 

 ¶ 15.50.05 Description of Broken Lines as Boundary of Design (Ch. 16 Design
 Application)
 

 The following statement must be used to
 describe the broken line boundary of a design ( MPEP § 1503.02 , subsection
 III):
 

 --The [1] broken line(s)
 define the bounds of the claimed design and form no part thereof.--
 

 Examiner Note:
 
 1. Do not use this form paragraph in an international
 design application.
 

 2. In bracket 1 insert type of broken line, e.g. dashed
 or dot-dash or dot-dot-dash.
 
 
 
 IV. SURFACE TREATMENT The ornamental appearance of a design for an article includes its
 shape and configuration as well as any indicia, contrasting color or materials,
 graphic representations, or other ornamentation applied to the article (“surface
 treatment”). Surface treatment must be applied to or embodied in an article of
 manufacture. Surface treatment, per se (i.e., not applied to or
 embodied in a specific article of manufacture), is not proper subject matter for a
 design patent under 35 U.S.C. 171 . Surface treatment may either be disclosed with
 the article to which it is applied or in which it is embodied and must be shown in
 full lines or in broken lines (if unclaimed) to meet the statutory requirement. See
 MPEP §
 1504.01 . The guidelines that apply for disclosing
 computer-generated icons apply equally to all types of surface treatment. See
 MPEP §
 1504.01(a) .
 

 A disclosure of surface treatment in a design drawing or photograph
 will normally be considered as prima facie evidence that the
 inventor considered the surface treatment shown as an integral part of the claimed
 design. An amendment canceling two-dimensional surface treatment or reducing it to
 broken lines will be permitted if it is clear from the application that applicant had
 possession of the underlying configuration of the basic design without the surface
 treatment at the time of filing of the application. See In re
 Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).
 Applicant may remove surface treatment shown in a drawing or photograph of a design
 without such removal being treated as new matter, provided that the surface treatment
 does not obscure or override the underlying design. The removal of three-dimensional
 surface treatment that is an integral part of the configuration of the claimed
 design, for example, removal of beading, grooves, and ribs, will introduce new matter
 as the underlying configuration revealed by this amendment would not be apparent in
 the application as originally filed. See MPEP § 1504.04 , subsection I.B.
 

 V. PHOTOGRAPHS AND COLOR DRAWINGS Drawings in design applications may be submitted in black and white
 or in color. See 37
 CFR 1.84(a) . Photographs, including photocopies of photographs,
 are not ordinarily permitted in utility and design patent applications. However, the
 Office will accept photographs in utility and design patent applications if
 photographs are the only practicable medium for illustrating the claimed invention.
 See 37 CFR
 1.84(b) . See also 37 CFR 1.81(c) and
 37 CFR
 1.83(c) , and MPEP § 608.02 .
 

 Where color drawings and color photographs are submitted, only one
 set of color drawings or color photographs are required if submitted via the USPTO
 patent electronic filing system. Three sets of color drawings or color photographs
 are required if not submitted via the USPTO patent electronic filing system. See
 37 CFR
 1.84(a)(2)(ii) . In addition the specification must contain, or
 be amended to contain, the following language as the first paragraph of the brief
 description of the drawings: --The file of this patent contains at least one
 drawing/photograph executed in color. Copies of this patent with color
 drawing(s)/photograph(s) will be provided by the Office upon request and payment of
 the necessary fee.-- See 37 CFR 1.84(a)(2)(iii) and
 MPEP §
 608.02 . 
 

 If the photographs are not of sufficient quality so
 that all details in the photographs are reproducible, this will form the basis of
 subsequent objection to the quality of the photographic disclosure. No application
 will be issued until objections directed to the quality of the
 photographic disclosure have been resolved and acceptable photographs have been
 submitted and approved by the examiner. If the details, appearance and shape of all
 the features and portions of the design are not clearly disclosed in the photographs,
 this would form the basis of a rejection of the claim under 35 U.S.C.
 112(a) and (b) , (or for applications filed
 prior to September 16, 2012, 35 U.S.C. 112 , first and second
 paragraphs), as nonenabling and indefinite.
 

 Photographs and drawings must not be combined in a submission of the
 visual disclosure of the claimed design in one application. The introduction of both
 photographs and drawings in a design application would result in a high probability
 of inconsistencies between corresponding elements on the drawings as compared with
 the photographs.
 

 When filing photographs or drawings with the original application, a
 disclaimer included in the specification or on the photographs themselves may be used
 to disclaim any surface ornamentation, logos, written matter, etc. which form no part
 of the claimed design. See also MPEP § 1503.01 , subsection II. 
 

 Color drawings are permitted in design applications when filed in
 accordance with the requirements of 37 CFR 1.84(a)(2) . As an
 alternative to color drawings, surfaces of the design may be lined in accordance with
 the graphic symbols discussed in MPEP § 608.02 , subsection IX, to
 represent color in black and white line drawings ( 37 CFR 1.84(a)(1) ). See
 37 CFR
 1.84(n) . If the drawing in an application is lined for color,
 the following statement should be inserted in the specification for clarity and to
 avoid possible confusion that the lining may be surface treatment --The drawing is
 lined for color.-- However, lining entire surfaces of a design to show color(s) may
 interfere with a clear showing of the design as required by 35 U.S.C.
 112(a) (or for applications filed prior to September 16, 2012,
 pre-AIA 35
 U.S.C. 112 , first paragraph), as surface shading cannot be used
 simultaneously to define the contours of those surfaces. 
 

 If color photographs or color drawings are filed with the original
 application, color will be considered an integral part of the disclosed and claimed
 design. The omission of color in later filed photographs or drawings will be
 permitted if it is clear from the application that applicant had possession of the
 underlying configuration of the basic design without the color at the time of filing
 of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46
 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP § 1503.01 , subsection II. Note
 also 37 CFR
 1.152 , which requires that photographs submitted in lieu of ink
 drawings in design patent applications must not disclose environmental structure but
 must be limited to the design claimed for the article. 
 

 Form paragraph 15.05.041 may be used when color
 drawing(s) or photograph(s) have been submitted.
 

 ¶ 15.05.041 Color Drawing(s)/Photograph(s) Submitted

 Color photographs or drawings have been submitted in this application. If
 replacement drawings are submitted, any showing of color in a black and white drawing is
 limited to the symbols used to line a surface to show color ( MPEP § 608.02 ) and must
 comply with the written description requirements of 35 U.S.C. 112 .
 Additionally, lining entire surfaces of a design to show color(s) may interfere with a clear
 showing of the design as required by 35 U.S.C. 112 because surface shading
 cannot be used simultaneously to define the contours of those surfaces. However, a surface may
 be partially lined for color with a description that the color extends across the entire
 surface; this technique would allow for the use of shading on the rest of the surface showing
 the contours of the design ( 37 CFR 1.152 ). In the alternative, a separate view, properly shaded to
 show the contours of the design but omitting the color(s), may be submitted if identified as
 shown only for clarity of illustration. Photographs and ink drawings are not permitted to be
 combined as drawings in one application.
 

 In any drawing lined for color, the following descriptive statement
 must be inserted in the specification (the specific colors may be identified for clarity): 
 

 --The drawing is lined for color.--

 However, some designs disclosed in color photographs/drawings cannot be
 depicted in black and white drawings lined for color. For example, a design may include
 multiple shades of a single color which cannot be accurately represented by the single
 symbol for a specific color. Or, the color may be a shade other than a true primary or
 secondary color as represented by the drafting symbols and lining the drawing with one of
 the drafting symbols would not be an exact representation of the design as originally
 disclosed.
 

 Examiner Note:

 Use this form paragraph when color drawing(s) or
 photograph(s) have been submitted in an application. 
 

 

 Form paragraph 15.61.01 may be used, where
 appropriate, to notify applicant regarding amending the specification to add a
 reference to color drawings or photographs.
 

 ¶ 15.61.01 Amend Specification to Add Reference to Color Drawing(s)/ Photograph(s) (Ch. 16
 Design Application)
 

 The application contains at least one color
 drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color
 drawings/photographs in design applications, the specification [1] amended
 to include the following language as the first paragraph of the brief description of the
 drawings section:
 

 
 The file of this patent contains at least one drawing/photograph
 executed in color. Copies of this patent with color drawing(s)/photograph(s) will be
 provided by the Office upon request and payment of the necessary fee.
 

 
 Examiner Note:
 
 1. Do not use this form paragraph in an
 international design application.
 

 2. In bracket 1, insert --must be-- or
 --has been--.
 
 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1501-Statutes and Rules Applicable 

 1502-Definition of a Design 
 1502.01-Distinction Between Design and Utility Patents 

 1502.02-Design Patent Practitioner Bar 

 
 

 1503-Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16 
 1503.01-Specification 

 1503.02-Drawing 

 
 

 1504-Examination 
 1504.01-Statutory Subject Matter for Designs 
 1504.01(a)-Computer-Generated Electronic Images 

 1504.01(b)-Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article 

 1504.01(c)-Lack of Ornamentality 

 1504.01(d)-Simulation 

 1504.01(e)-Offensive Subject Matter 

 
 

 1504.02-Novelty 

 1504.03-Nonobviousness 

 1504.04-Considerations Under 35 U.S.C. 112 

 1504.05-Restriction 

 1504.06-Double Patenting 

 1504.07 - 1504.09-[Reserved] 

 1504.10-Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) 

 1504.11-1504.19-[Reserved] 

 1504.20-Benefit Under 35 U.S.C. 120 

 1504.21-1504.29-[Reserved] 

 1504.30-Expedited Examination 

 
 

 1505-Term of Design Patent 

 1506-1508-[Reserved] 

 1509-Reissue of a Design Patent 

 1510-Reexamination 

 1511-Protest 

 1512-Relationship Between Design Patent, Copyright, and Trademark 

 1513-Miscellaneous 

 

 

 
 

 
 
 

 
 

 

 
 
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