Suppose that you want to file a design patent application for an article that is three-dimensional. What views of the article will you need for the design patent application that will be sufficient to support your claim? The answer is a sufficient number of views to constitute a complete disclosure of the appearance of the design.
35 U.S.C. 112 states
- The specification 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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
- The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
In a design patent application, to support the claim, the drawings must contain a sufficient number of views for the appearance of the design. Typically, the views in the drawings are two-dimensional and include a front, rear, top, bottom and right and left sides. However, perspective views may be submitted in addition to the two-dimensional views to clearly show the complete appearance of the three dimensional article.
What if some of the views are identical? For example, what if the left and right sides of the three-dimensional article are identical or a mirror image? Will one view of one side be sufficient? Yes, if a statement is made in the drawing description that the other side is identical or a mirror image. See Moore v. Stewart, 225 U.S.P.Q. 313 (W.D. Ark. 1985) (Design patent for whistle is not invalid for failure of drawings to disclose appearance of two sides of whistle that were identical to sides shown or to disclose whistle’s symmetry, which could have been deduced from views shown).
Can sectional views be submitted to show the three-dimensional shape? Yes, sectional views may be included in addition to the two-dimensional and perspective views if needed to clarify the shape of the design. Sectional views may be submitted where the exact contour or configuration of the exterior surface of a claimed design is not apparent from the views of the drawings for a three-dimensional article. However, no attempt should be made to illustrate features of internal construction. Ex parte Lohman, 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat. 1912).
Can a single two-dimensional view of a three-dimensional article be sufficient to support a claimed design? Yes, if the level of detail required of the claimed design for the three-dimensional article is capable of being defined by a two-dimensional, plan- or planar view illustration.
In a recent case, In re: Ron Maatiata, 2017-2037 (2018), the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office that misapplied 35 U.S.C. § 112 to a design patent application. Initially, the Examiner rejection of single claim of a design patent application covering the design of an athletic shoe bottom as being non-enabled and indefinite under 35 U.S.C. § 112 because it used a single, two-dimensional plan-view drawing to disclose a shoe bottom design and thereby left the design open to multiple interpretations regarding the depth and contour of the claimed elements. The Applicant appealed to the PTAB, which upheld the Examiner’s rejection. The Applicant subsequently appealed to the CAFC.
In reversing the PTAB decision, the CAFC stated that “[[i]]n situations like this, where the sufficiency of a disclosure for purposes of § 112 depends on whether a drawing adequately discloses the design of an article, we believe that the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar view illustration.” The court went on to explain that “[[t]]he design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar view drawing.” The court stated that “[[t]]he design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective. See Ex Parte Salsbury, 38 U.S.P.Q. 149, 1938 WL 28182, at *2 (Com’r Pat. & Trademarks May 5, 1938) (“It is recognized that flat articles can generally be sufficiently illustrated by a single view.”). Such a claim, with a single drawing, would cover all similarly designed rugs or mats, even if one might have a low pile and the other a high pile (for a rug) or might be woven or textured fabric (for a placemat).”
The court also stated that, for a design of a shoe bottom, one could have chosen to disclose the design from a three-dimensional perspective. The court inferred that such a three-dimensional perspective would be the scope of the claimed design for judging indefiniteness.
As to sufficiency of drawings in a design patent application, you should make sure that the drawings include a sufficient number of views for illustrating the design to constitute a complete disclosure. It is recommended that you not only file the typical two-dimensional views that include a front, rear, top, bottom and right and left sides, but also one or more perspective views to clearly show the appearance of the claimed design. This will help avoid your design patent application being rejected based on indefiniteness under 35 U.S.C. § 112. Therefore, using these tips, you may avoid a sufficiency or indefiniteness rejection of the claim based on the drawings in your design patent application.
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