Suppose that you have an invention disclosure for a utility invention that you want to protect. When you review the invention disclosure, you notice that the inventor has only supplied color drawings or photographs of the invention. Can you file the utility patent application with the color drawings or photographs? The answer is YES! if a petition is granted explaining why the color drawings or photographs are necessary for illustrating the claimed invention.
Under 35 U.S.C. § 113, the Applicant for a patent must “furnish a drawing where necessary for the understanding of the subject matter to be patented”. Typically, the drawings in a utility patent application are submitted in black and white. See 37 C.F.R. § 1.84(a). Black and white drawings with India ink, or its equivalent, that secures solid black lines, must be used for drawings.
Color drawings are not permitted in international patent applications (see PCT Rule 11.13). However, the U.S. Patent and Trademark Office (“Office”) will accept color drawings in utility patent applications only after granting a petition filed explaining why the color drawings are necessary.
For color drawings in a utility patent application, 37 C.F.R. § 1.84(a)(2) states that a petition must be filed and include the following:
- (i) The fee set forth in § 1.17(h);
- (ii) One (1) set of color drawings if submitted via the Office electronic filing system or three (3) sets of color drawings if not submitted via the Office electronic filing system; and
- (iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
An example of language for a petition may be as follows:
Color drawings have been submitted in this application. The color drawings are necessary as the only practical medium by which aspects of the claimed subject matter may be accurately conveyed. For example, the claimed invention relates to model slices with areas of various levels of heat, and the color drawings show the various levels of heat, which are necessary to illustrate features of the claims.
The first paragraph of the Brief Description of the Drawings section of the Specification includes the following language:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
As the color drawings are being filed electronically via EFS-Web, only one set of the drawings is submitted.
If the Office does not grant the petition, the Office will object to the color drawings as being improper and require the Applicant either to cancel the drawings or to provide substitute black and white drawings.
Photographs in a utility patent application may be submitted. See 37 C.F.R. § 1.84(b). Under 37 C.F.R. § 1.84(b), the Office will accept photographs in a utility patent application if the photographs are the only practicable medium for illustrating the claimed invention. See 37 C.F.R. § 1.84(b). Examples of acceptable photographs are “photographs or photomicrographs of electrophoresis gels, blots ( e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, …”.
Color photographs are permitted subject to the requirements of 37 C.F.R. § 1.84(b)(2) and § 1.152. 37 C.F.R. § 1.84(b)(2) states:
(b) Photographs.—
- (2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
When color photographs are submitted in a utility patent application, a petition must be filed, not only explaining why the color photographs are necessary but that the color photographs are the only practicable medium for illustrating the claimed invention. Once again, if the petition is not granted, the Office will object to the color photographs as being improper and require the Applicant either to cancel the photographs or to provide substitute black and white drawings.
For continuation utility patent applications where a petition for color drawings or photographs was accepted, the Applicant must renew the petition even though a similar petition was filed in the original utility application. When the patent issues, a set of color drawings or color photographs will be attached to the Letters Patent. Although copies of the patent are printed in black and white, upon special request and payment of a fee, the Office will provide copies of the patent with color drawings or photographs.
For practice tips, it is recommended that you try to avoid using color drawings or photographs unless you can explain why they are necessary, or it is truly the only practicable medium illustrating the claimed invention. For another practice tip, consider using black and white drawings to avoid an objection to the drawings in your utility patent application.