Suppose that you have an invention disclosure for a design of an article that you want to protect.  When you review the invention disclosure, you notice that the inventor has only supplied photographs of the design and not any line drawings of the design.  Can you file the design patent application with the photographs?  The answer is YES! if that is the only practicable medium for illustrating the design for the article.

[35 U.S.C.] 171  refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980).  The subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916).

In a design patent application, the design for an article is the visual appearance or characteristics embodied in or applied to the article.  Since the subject matter of a design is its appearance, the design patent application may relate to the configuration or shape of the article, to the surface ornamentation applied to the article, or to the combination of configuration and surface ornamentation.  Thus, a design patent application must contain drawings to show the visual appearance of the article.

For drawings in a design patent application, 37 C.F.R. 1.152 states:

The design must be represented by a drawing that complies with the requirements of 37 C.F.R. 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 be limited to the design claimed for the article.

The drawings in a design patent application 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 a design patent application by the U.S. Patent and Trademark Office (“USPTO”).  However, the USPTO will accept photographs in design patent applications if the photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b).

Drawings in design patent applications must be of sufficient quality including photographs.  If the photographs are not of sufficient quality so that all details in the photographs are reproducible, the USPTO may reject the quality of the photographs and object to the disclosure.  First, the USPTO has to resolve the quality of the photographs before it issues any objection.  If acceptable photographs have been submitted to the USPTO showing the details, appearance and shape of the design, the USPTO will approve the photographs.  If the details, appearance and shape of the design are not clearly disclosed in the photographs, the USPTO may reject the claim under 35 U.S.C. § 112 as being either nonenabling and/or indefinite.

When photographs are submitted in a design patent application, the USPTO may object to the drawings if the USPTO believes that the photographs are not the only practicable medium for illustrating the claimed invention, and the design has no ornamental effects that cannot be clearly shown in line drawings.

Black and white photographs, in lieu of drawings, are permitted subject to the requirements of 37 C.F.R. §1.84(b)(1) and §1.152.  37 C.F.R. §1.84(b)(1) states:

  • (b) Photographs—
    • (1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.  For example, photographs or photomicrographs of: electrophoresis gels, blots ( g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable.  If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph.  The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.

In some cases, the black and white photographs are the only practicable medium for illustrating the claimed invention.  For example, the design has fine detail and ornamental effects that cannot be clearly shown in line drawings.  Such a design may be similar to the examples of cell cultures or crystalline structures.  If the lines in the design are too fine and small and any drawing would not show these details in sufficient quality, photographs are acceptable.  For example, the design has ornamental effects similar to the fine detail of an ornamental button, which cannot be reproduced in line drawings.

For practice tips, it is recommended that you try to avoid using photographs if line drawings can be used for illustrating the claimed invention.  For another practice tip, if photographs are to be used, you should interview a couple of patent draftsman that attest to not being able to draw such detail in a black and white line drawing.  If the photographs are the only practicable medium for illustrating the ornamental effects of the design, consider using black and white photographic drawings.

To avoid a design patent application being rejected based on photographs for the drawings, you should make sure that photographs are the only practicable medium for illustrating the design.  As such, you need to have photographs of sufficient quality that are clear and show the details of the design.  In addition, you should have a sufficient number of photographs that show the various views of the design.  For all of these reasons, the black and white photographic drawings should be acceptable for the drawings in a design patent application.  Therefore, using these tips, you may avoid a rejection of the drawings in your design patent application.

Connect with Dan on LinkedIn.