The Patent Process

THE PATENT PROCESS

A Compendium of Information Regarding US Patents

Compiled and Edited By

John Sutherland

November 4, 2000

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Editor’s Notes

Information used in the following document was obtained via the Internet, and may contain minor errors and
anomalies. Having said that, however, this document will provide the reader with an overview of the patent
process, as well as a fairly detailed description of the requirements needed to prepare a Utility Patent and a
Design Patent. Due to the nature of our business, I have left out the description of requirements for Plant
Patents.

Questions, comments, and corrections can be directed to me, and I will attempt to resolve and answer all such
inquiries in a timely manner. If you have a patentable idea/product and need assistance beyond the self-help
information found in this document, you may contact me for additional information and support.

John Sutherland
Kingston Technology Company, Inc.
17600 Newhope Street
Fountain Valley, CA 92708
USA
Tel: +1-714-438-2775
E-mail: johns@kingston.com

*******************************

Document Contents

Section Description Page

1 Introduction 3

2 A Guide to Filing a Utility Patent Application 7

3 A Guide to Filing a Design Patent Application 20

Sample Utility Patent #5,864,630 53

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1.0 INTRODUCTION
1.1 WHAT IS A PATENTABLE INVENTION?
In order to be patentable, an invention must be “novel” and “useful” (35 U.S.C. Section 101).

“Novel” means that others must not have known the invention or placed the invention in public use in the
United States before you invented it, and that others must not have already patented or described the
invention in a printed publication anywhere in the world, more than one year prior to the filing of the patent
application.

Also, the invention must not be “obvious.” This means that any changes or modifications you make over any
prior products or published designs must not have been obvious to a person having ordinary skill in the industry
or trade, at the time of your invention.

“Useful” means simply that the invention has a useful purpose, actually works and is not frivolous or immoral.

1.2 THE PATENT PROCESS

Purpose of a Patent
Think of a patent as part of a bilateral agreement with the government, an agreement where both parties
benefit if the terms are honored. If you do not honor the terms, this may result in a court declaring your
patent invalid. Failing to disclose the “best mode” (the best configuration of your invention) at the time of the
filing of your patent application is a violation of the terms of the agreement and, as such, places your patent in
jeopardy.

Who may obtain a Patent?

The Patent Laws permit the Patent Office to award patents only to the true inventor or inventors. If you are
an inventor, you cannot file a patent application as the inventor unless you are also the inventor or co-inventor
of the invention (as the drafter of the patent application defined the invention it in at least one claim of the
patent application). In addition, you cannot get a patent on a mere idea, concept, or suggestion. Therefore,
even if you, as an inventor, provide the basic idea or identify the need which the invention is to fill, and
subsequently fund the development of the invention by others, the Patent Laws do not entitle you to be named
as an inventor. You, the inventor, however, may retain full ownership of the patent rights, and thus benefit
from the future income of the patent to the exclusion of the true inventors.

Bars to Obtaining Patent Protection:

The following occurrences disqualify you from being able to receive a U.S. patent on your invention:
1) When anyone publicly uses the invention earlier than one year prior to your filing of a U.S. patent
application;
2) When a foreign government grants you a foreign patent on an application covering the same invention which
you filed more than one year prior to filing your U.S. patent application;
3) When anyone publishes any article anywhere in the world disclosing the features of the invention more
than one year prior to filing your patent application;
4) When another publishes, patents, or invents the same invention prior to the earliest date on which you
reduced your invention to practice (Note that if someone invents the invention before you, but later
“abandons” the invention, you may still be entitled to a patent on the invention);
5) When you have abandoned the invention; and
6) When you did not yourself invent the subject matter for which you seek a patent.

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Many foreign countries bar the issuance of a patent if anyone publicly used or disclosed the invention any
length of time before the filing of a patent application in the foreign country. In other words, many foreign
countries do not provide a one year grace period, as does the U.S. patent system. However, if you file for a
U.S. patent before you do anything which might bar your obtaining a patent in foreign countries, then, under
certain international treaties, foreign countries will consider your U.S. filing date as if it were your foreign
filing date, thus allowing you to antedate activities which otherwise would constitute a bar [See the Paris
Convention for the Protection of Industrial Property].

The Patent Search:

You should search prior patents and publications at the earliest possible opportunity. Practitioners refer to
this as a “novelty” search. The primary reason for this is to avoid the futility and cost of filing a patent
application on an invention that someone else has already patented. In addition, a search decreases the
chances that you will inadvertently infringe someone else’s patent (note that a “novelty” search is not an
infringement search—an infringement search is something completely different, costing anywhere from
several hundred to tens of thousands of dollars). Still another reason for the search is to obtain information
about the state of the art of the technical field of the invention, which you may use to improve the invention
and increase it’s marketability (provided, of course, that you do not infringe someone else’s patent)!

If you work for a company involved in an intensive research and development project, this search can save time
and money by avoiding a wasted effort at “reinventing the wheel.” There are countless examples of situations
in which companies could have saved millions of dollars in unnecessary research and development costs, simply
by taking advantage of one of the patent system’s primary purposes, that of being a resource of relatively up-
to-date technical knowledge.

In addition, you may be able to use some of the information in the prior art patents found during your patent
search to help locate companies interested in licensing your patent. [The term “prior art” simply means the
relevant technology as it existed apart from your invention, just prior to your filing for patent protection]. On
the first page of the published patent, directly beneath the names of the inventors (See Appendix, exhibit A),
the Patent Office prints the names and addresses of companies to whom inventors have licensed their patents.

You may elect to perform the preliminary patent search yourself, or, you may hire a patent practitioner or
search professional to perform the search for you. Should you elect to attempt a search yourself, a system of
patent depository libraries is available in many cities throughout the country. In the Houston area, there is
only one such library—Fondren Library at Rice University. At these patent depository libraries, you may
examine any issued U.S. patent. In addition, the Patent Office provides a database of patent summaries on the
Internet (visit my web page—I provide a link to this database). I suggest that you search the Internet
summaries first, and then visit the local patent depository library where you can perform a more in-depth
search.

Even though I recommend that you hire a professional to perform the patent search, I also recommend that
you do a patent “survey” search yourself. A survey search is a preliminary and inexpensive patent search, which
you perform before your first meeting with a patent practitioner. If the results are in your favor, this will
give you the confidence that your $600 to $1000 investment in a professional search and patentability opinion
will be worthwhile. In addition, a survey search will help educate you about the state of the art in the field of
your invention (more on this later).

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Patent Pending
Manufacturers and marketers of products often use the terms “patent pending” and “patent applied for” to
inform the public that an application for a patent on that product is on file in the Patent Office. [The law
imposes a fine on those who use these terms falsely]. For the period of time during which your patent is
pending, the Patent Office holds your patent application in strict secrecy. What may surprise you though is
that having a patent pending provides no formal protection against infringement. Nevertheless, when a patent
is pending, because the potential for its grant exists at the same time that the content of the application is
held secret, this makes it more difficult for a competitor to effectively design around your patent. In some
cases, the mere threat that your application may be granted may be sufficient to deter a would-be competitor
from manufacturing the invention. If your patent issues and court rules that your competitor infringes your
patent, he may have to completely shut down production of his product—a death sentence where his primary
source of revenue is derived from manufacturing the infringing product.

The Special Problems of Joint Inventorship and Assignments

When assignments, employment agreements, joint inventors, or possible joint inventors are involved, you should
bring this to your patent practitioner’s attention immediately. If you omit an inventor that you should have
recognized as a joint inventor, then the joint inventor or an infringer in a subsequent lawsuit can contest the
validity of your patent application. If the protestor can prove bad faith in your omission, he could invalidate
your patent.

Please understand that just because you should list someone else as a joint inventor in your patent application,
this does not mean that the patent laws require that this person share in the future income from your patent.
In fact, a joint inventor can contractually assign away all of his rights in the invention. However, if he retains
any ownership interest at all, even as little as one percent, he has a right to protect that interest by entering
into license agreements with manufacturers, or by exploiting the invention himself. In fact, unless otherwise
stated in a contract, he may enter into such license agreements without your permission. However, if he does
so, he must share with you any income or royalty he earns from any such license agreement.

If you have signed an employment agreement in which you pre-assigned to your employer all rights in job-
related inventions, you may not have any rights in the invention at all. In such cases, you should first obtain a
written waiver or release from your employer before you spend any money on a patent application.

Types of Patents
There are three different types of patents: utility patents, design patents, and plant patents.

The Patent Office grants utility patents to “anyone who invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The term
“process” means a process or method; you may patent new industrial or technical processes or methods. The
term “manufacture” refers to manufactured articles. “Composition of matter” relates to chemical
compositions, and may include mixtures of ingredients as well as chemical compounds.

The Patent Office grants design patents to anyone who invents a new, original, and ornamental design for an
article of manufacture. The patent laws protect the appearance of the article, not its function (for this
reason, seek design patent protection only when the ornamental features of your invention are unique and
commercially valuable).

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The Patent Office grants plant patents to any person who has invented or discovered and asexually
reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly
found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.

Design Patents vs. Utility Patents:

Design patents, under certain circumstances, may be more effective than utility patents in protecting your
intellectual property. Because the patent laws base design patent protection on the ornamental appearance of
the invention, design patents are almost always easier to obtain than utility patents. Provided that the
appearance of your “article of manufacture” is not solely dictated by its function, the patent laws consider
that its appearance is ornamental and therefore patentable, provided also that the article of manufacture is
useful, and the ornamental aspect is novel and not obvious to the designer of ordinary skill in the art. In
addition, compared to utility patents, design patents are significantly less expensive to obtain and to maintain
in force. The cost for filing a design patent application begins at about $800. Unlike utility patents, the patent
laws do not require you to pay maintenance fees.

The right to file and maintain an action for patent infringement is the essence of patent protection. With
design patents, the criteria for judging infringement are more subjective than in utility patent cases. This
uncertainty often favors the patent owner. In addition, the design patent holder may elect to recover total
profits. The recovery of total profits is not available in a utility patent infringement case. The potential for
such a recovery adds to the effectiveness of a design patent as a deterrent to infringement. For example, a
court ordered Waring, the blender company, to pay Braun more than $1,000,000 for its infringement of a
Braun design patent for a tapered household blender design. Braun v. Dynamics Corp of America, 975 F.2d 815
(Fed. Cir 1992). On the other hand, because utility patent claims cover a wide variety of designs, regardless
of the ornamental appearance of any particular design, utility patents are generally broader than design
patents. Therefore, a utility patent is generally the most desirable type of patent.

Patent Protection in Foreign Countries

A U.S. patent gives you the right to sue anyone who makes, uses, or sells your invention within the United
States, its territories, and possessions. If you desire protection in foreign countries, you must file patent
applications in those countries. However, many foreign patent laws bar the grant of a patent if, before you
filed in the foreign country, you displayed, sold to the public, or described your invention in a printed
publication anywhere in the world. Therefore, early in the patent process, you should decide whether or not to
seek foreign patent protection.

In addition, the exclusive right to exclude others from selling your invention, which your U.S. patent grants,
can sometimes deter a potential overseas competitor from entering the overseas market. This indirect benefit
of a U.S. patent depends on the economies of scale in the world market, and the relative proportion of the
U.S. market. If the U.S. market for the invention is a substantial proportion of the world market for the
invention, and if a potential competitor must make a significant investment in overhead and fixed costs in
order to produce the product at a competitive price, the foreign demand alone may not be sufficient to justify
the products overseas manufacture. Further, the sale of a product in the U.S., which an overseas
manufacturer manufactured using a process covered by a U.S. patent, infringes the U.S. patent. [35 U.S.C. A7
271(g)]. This illustrates a special advantage of a process patent over other, more common, utility patents.

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2.0 A Guide to Filing a Utility Patent Application

U.S. Patent and Trademark Office (as of 10-17-00)

2.1 Introduction
2.2 Nonprovisional Utility Patent Application Requirements
2.3 Utility Patent Application Transmittal Form Or Transmittal Letter
2.4 Fee Transmittal Form And Appropriate Fee
2.5 Specification
2.5.1 Title Of Invention
2.5.2 Cross-Reference To Related Applications
2.5.3 Statement Regarding Federally Sponsored Research Or Development
2.5.4 Reference To A Microfiche Appendix
2.5.5 Background Of The Invention
2.5.6 Brief Summary Of The Invention
2.5.7 Brief Description Of The Several Views Of The Drawing
2.5.8 Detailed Description Of The Invention
2.5.9 Claim Or Claims
2.5.10 Abstract Of The Disclosure
2.6 Drawings (When Necessary)
2.7 Oath Or Declaration
2.8 Sequence Listing (When Necessary)
2.9 Obtaining A Receipt For Documents Mailed To The Pto
2.10 Drawing Requirements
2.11 Identification Of Drawings
2.12 Graphic Forms In Drawings
2.13 Paper
2.14 Views
2.14.1 Exploded Views
2.14.2 Partial Views
2.14.3 Sectional Views
2.14.4 Alternate Position
2.14.5 Modified Forms
2.15 Arrangement Of Views
2.16 View For The Official Gazette
2.17 Scale
2.18 Character Of Lines, Numbers, And Letters
2.19 Shading
2.20 Symbols
2.21 Legends
2.22 Numbers, Letters, And Reference Characters
2.23 Lead Lines And Arrows
2.24 Copyright Or Mask Work Notice
2.25 Numbering Of Sheets Of Drawings And Views
2.26 Security Markings
2.27 Corrections
2.28 Holes

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2.1 INTRODUCTION
The U.S. Patent and Trademark Office (PTO) is the government agency responsible for examining patent
applications and issuing patents. A patent is a type of property right. It gives the patent holder the right, for
a limited time, to exclude others from making, using, or selling the subject matter that is within the scope of
protection granted by the patent. The PTO determines whether a patent should be granted in a particular
case. However, it is up to the patent holder to enforce his or her own rights if the PTO does grant a patent.

The purpose of this guide is to provide you with basic information about filing a utility patent application. A
patent application is a complex legal document, best prepared by one trained to prepare such documents. Thus,
after reviewing this guide, you may wish to consult with a patent attorney or agent. Additional information is
available:
• by calling the PTO’s General Information Services at +1-800-PTO-9199 or +1-703-308-4357,
• from the PTO’s Web site at www.uspto.gov, and
• at your nearest Patent and Trademark Depository Library (PTDL).

There are various types of patents—utility, design, and plant. There are also two types of utility patent
application—provisional and nonprovisional. Each year the PTO receives approximately 200,000 patent
applications. Most of these are for nonprovisional utility patents.

This guide contains information to assist you in filing your nonprovisional utility patent application. It discusses
the required parts of the utility patent application and includes samples of some of the forms you may use.
This information is generally derived from the Patent Act, found at Title 35 of the United States Code
(U.S.C.), and Title 37 of the Code of Federal Regulations (CFR). These materials are available at PTDLs and at
most law libraries.

If you have questions about:

• other types of patent applications,
• locating a patent attorney or agent,
• obtaining the most up-to-date Fee Schedule, or
• obtaining copies of other PTO publications,
please contact General Information Services, the PTO Web’s site, or a PTDL.

2.2 NONPROVISIONAL UTILITY PATENT APPLICATION REQUIREMENTS

A nonprovisional utility patent application must be in the English language or be accompanied by a verified
translation in the English language and a fee set forth in 37 CFR §1.17(k) [Non-English Specification Fee Code
139].

All papers which are to become part of the permanent records of the PTO must be typewritten or produced
by a mechanical (or computer) printer. The text must be in permanent black ink or its equivalent; on but one
side of the paper; in portrait orientation; on white paper that is all of the same size, flexible, strong, smooth,
nonshiny, durable, and without holes. The paper size must be either:
• 21.6 cm. by 27.9 cm. (81 /2 by 11 inches), or
• 21.0 cm. by 29.7 cm. (DIN size A4).

There must be a left margin of at least 2.5 cm. (1 inch) and top, right, and bottom margins of at least 2.0 cm.
(3 /4 inch). Drawing page requirements are discussed separately below.

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A nonprovisional utility patent application must include a specification, including a claim or claims; drawings,
when necessary; an oath or declaration; and the prescribed filing fee. A complete nonprovisional utility patent
application should contain the elements listed below, arranged in the order shown.
• Utility Patent Application Transmittal Form or Transmittal Letter
• Fee Transmittal Form and Appropriate Fee
• Specification
• Drawings (when necessary)
• Oath or Declaration
• Sequence Listing (when necessary)

These elements are further described as follows:

2.3 Utility Patent Application Transmittal Form or Transmittal Letter

A Utility Patent Application Transmittal form (Form PTO/SB/05) or a transmittal letter should be filed with
every patent application to instruct the PTO on the services desired in the processing of the application. It
identifies the name of the applicant, the type of application, the title of the invention, the contents of the
application, and any accompanying enclosures. (Form PTO/SB/21 is to be used for all correspondance after
initial filing.)

2.4 Fee Transmittal Form and Appropriate Fee

The Fee Transmittal form (Form PTO/SB/17) should be used to calculate the prescribed fee and indicate the
method of payment.

Fees for a patent application should be submitted with the application and must be made payable to the
“Commissioner of Patents and Trademarks.” If an application is filed without the basic filing fee, the applicant
will be notified and will be required to submit the filing fee along with a surcharge within the time period set
in the notice. Fees are subject to change and the applicant should consult the current Fee Schedule before
filing.

Please note that two sets of fees exist, one for small entities and one for other than small entities. If you
qualify as a small entity for patent fee purposes, you must file the appropriate small entity statement (Form
PTO/SB/09, PTO/SB/10, PTO/SB/11, or PTO/SB/12) to claim your entitlement to reduced fees.

2.5 Specification
The specification is a written description of the invention and of the manner and process of making and using
the same. The specification must be in such full, clear, concise, and exact terms as to enable any person skilled
in the art or science to which the invention pertains to make and use the same.

Computer program listings, when required to be submitted as part of the specification, must be direct
printouts (not copies) from the computer’s printer with dark, solid black letters not less than 0.21 cm. (0.08
inch) high (elite type), on white, unshaded and unlined paper; and the sheets should be submitted in a
protective cover.

The pages of the specification (but not the transmittal letter sheets or other forms), including claims and
abstract, should be numbered consecutively, starting with 1. The page numbers should be centrally located
preferably below the text. The lines of the specification must be 1.5 or double spaced (lines of text not
comprising the specification need not be 1.5 or double spaced). It is desirable to include an indentation at the
beginning of each new paragraph.

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It is preferable to use all of the section headings described below to represent the parts of the specification.
Section headings should be in upper case without underlining or bold type. If the section contains no text, the
phrase “Not Applicable” should follow the section heading.

2.5.1 Title of Invention

The title of the invention (or an introductory portion stating the name, citizenship, residence of each
applicant, and the title of the invention) should appear as the heading on the first page of the specification.
The title should be brief but technically accurate and descriptive. It is preferred that the title not exceed
280 typewritten spaces.

2.5.2 Cross-Reference to related Applications

Any nonprovisional utility patent application claiming the benefit of one or more prior filed copending
nonprovisional applications (or international applications designating the United States of America) must
contain in the first sentence of the specification following the title, a reference to each such prior
application, identifying it by the application number (consisting of the series code and serial number) or
international application number and international filing date, and indicating the relationship of the
applications. Cross-references to other related patent applications may be made when appropriate.

2.5.3 Statement regarding Federally Sponsored research or Development

The application should contain a statement as to rights to inventions made under federally sponsored research
and development (if any).

2.5.4 Reference to a Microfiche Appendix

If a computer program listing printout is required and is 11 or more pages long, you must submit such listing in
the form of microfiche which will not be part of the printed patent. The total number of microfiche and total
number of frames should be specified.

2.5.5 BACKGROUND OF THE INVENTION

This section should include a statement of the field of endeavor to which the invention pertains. This section
may also include a paraphrasing of the applicable U.S. patent Classification Definitions or the subject matter
of the claimed invention. In the past, this part of this section may have been titled “Field of Invention” or
“Technical Field.”

This section should also contain a description of information known to you, including references to specific
documents, which are related to your invention. It should contain, if applicable, references to specific
problems involved in the prior art (or state of technology) which are solved by your invention. In the past, this
section may have been titled “Description of the Related Art” or “Description of Prior Art.”

2.5.6 Brief Summary of the Invention

This section should present the substance or general idea of the claimed invention in summarized form. The
summary may point out the advantages of the invention and how it solves previously existing problems,
preferably those problems identified in the BACKGROUND OF THE INVENTION. A statement of the object
of the invention may also be included.

2.5.7 Brief Description of the Several Views of the Drawing

Where there are drawings, you must include a listing of all figures by number and with corresponding
statements explaining what each figure depicts.

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2.5.8 Detailed Description of the Invention

In this section, the invention must be explained along with the process of making and using the invention in
full, clear, concise, and exact terms. This section should distinguish the invention from other inventions and
from what is old; and describe completely the process, machine, manufacture, composition of matter, or
improvement invented. In the case of an improvement, the description should be confined to the specific
improvement and to the parts which necessarily cooperate with it or which are necessary to completely
understand the invention.

It is required that the description be sufficient so that any person of ordinary skill in the pertinent art,
science, or area could make and use the invention without extensive experimentation. The best mode
contemplated by you of carrying out your invention must be set forth in the description. Each element in the
drawings should be mentioned in the description. This section has often, in the past, been titled “Description
of the Preferred Embodiment.”

2.5.9 Claim or Claims

The claim or claims must particularly point out and distinctly claim the subject matter which you regard as the
invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is
determined, in large measure, by the choice of wording of the claims.

A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section
must begin on a separate sheet. If there are several claims, they shall be numbered consecutively in Arabic
numerals, with the least restrictive claim presented as claim number 1.

The claims section must begin with a statement such as “What I claim as my invention is: . . .” or “I (We) claim:
. . .” followed by the recitation of the particular matter which you regard as your invention.

One or more claims may be presented in dependent form, referring back to and further limiting another claim
or claims in the same application. All dependent claims should be grouped together with the claim or claims to
which they refer to the extent practicable. Any dependent claim which refers to more than one other claim
(“a multiple dependent claim”) shall refer to such other claims in the alternative only. Each claim should be a
single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim
should be separated by a line indentation.

The fee required to be submitted with a nonprovisional utility patent application is, in part, determined by the
number of claims, independent claims, and dependent claims.

2.5.10 Abstract of the Disclosure

The purpose of the abstract is to enable the PTO and the public to determine quickly the nature of the
technical disclosures of your invention. The abstract points out what is new in the art to which your invention
pertains; however, it will not be used for interpreting the scope of the claim(s). It should be in narrative form
and generally limited to a single paragraph, and it must begin on a separate page.

2.6 Drawings (when necessary)

A patent application is required to contain drawings if drawings are necessary for the understanding of the
subject matter sought to be patented. The drawings must show every feature of the invention as specified in
the claims. Omission of drawings may cause an application to be considered incomplete. Please see the detailed
discussion of drawing requirements.

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2.7 Oath Or Declaration

The oath or declaration (Forms PTO/SB/01, PTO/SB/02A, PTO/SB/02B, and PTO/SB/02C) must identify the
application with which it is associated, and must give the name, city and either state or country of residence,
country of citizenship, and post office address of each inventor. It must state whether the inventor is a sole
or joint inventor of the invention claimed.

Additionally, designation of a correspondence address is needed on the oath or declaration. Providing a

correspondence address will help to ensure prompt delivery of all notices, official letters, and other
communications.

The oath or declaration must be signed by all of the actual inventors. An oath may be administered by any
person within the United States, or by a diplomatic or consular officer of a foreign country, who is authorized
by the United States to administer oaths. A declaration does not require any witness or person to administer
or verify its signing. Thus, use of a declaration is preferable.

The oath or declaration must be in a language which you understand. If you comprehend the English language,
you should preferably use an English language oath or declaration. If you cannot comprehend English, any oath
or declaration must be in a language which you can comprehend and shall state that you understand the
content of any documents to which the oath or declaration relates. If the oath or declaration used is in a
language other than English, the oath or declaration must either be (1) accompanied by a verified English
translation, or (2) in a form provided or approved by the Patent and Trademark Office.

If the person making the oath or declaration is not the inventor, the oath or declaration shall state the
relationship of that person to the inventor, upon information and belief, the facts which the inventor would
have been required to state, and the circumstances which render the inventor unable to sign, namely death,
insanity or legal incapacity or unavailability/refusal to sign. (See 37 CFR §§1.42, 1.43, and 1.47)

2.8 Sequence Listing (when necessary)

This section, for the disclosure of a nucleotide and/or amino acid sequence, should contain a listing of the
sequence complying with 37 CFR §1.821 through 37 CFR §1.825.

2.9 Obtaining a Receipt for Documents mailed to the PTO

A receipt for documents mailed to the PTO can be obtained by attaching a stamped, self-addressed postcard
to the first page of the documents. The postcard should contain a detailed list that identifies each type of
document and the number of pages of each document. Upon receipt at PTO, the detailed list on the postcard
will be compared to the actual contents of the delivery. Any discrepancies between the detailed list and the
actual contents will be noted on the postcard. The postcard will be initialed and date stamped by the person at
PTO who received the delivery. The postcard will be returned by mail to the addressee whose name appears on
the postcard.

The returned postcard serves as evidence of receipt in the PTO of all items listed on the postcard, unless
otherwise noted by PTO on the postcard. That is, if the postcard receipt has been annotated to indicate that
a particular paper was not received, the postcard receipt will not serve as evidence of receipt of that paper in
the PTO. Likewise, the postcard receipt will not serve as evidence of receipt of papers which are not
adequately itemized.

When preparing the detailed list of documents identified on the postcard, it is important to include the
following identifying information:

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• the application number (if known)

• the filing date of the application (if known)
• the title of the invention
• the name of the inventor or inventors

The postcard should also include a detailed list of every document type and the number of pages of each
document that are included in the delivery. If the postcard is submitted with a patent application, the detailed
listing should include the following items:
• the title and number of pages of each PTO form
• the number of pages of specification (excluding claims)
• the number of claims and the number of claims pages
• the number of figures of drawing and the number of sheets of drawing
• whether oath or declaration statement is included
• the type and number of other documents that are included
• the amount of payment and the method of payment (i.e., check, money order, deposit account)

It is important that the postcard itemize each component of the application. For example, a general statement
such as “complete application” or “patent application” or “drawings” will not show that each of the required
components of an application was included if one of the items is later found to be missing by PTO.

When the self-addressed postcard is submitted with a utility patent application, the PTO will stamp the
postcard being returned to the addressee with both the receipt date and the application number before
placing it in the outgoing mail.

Upon receipt of the returned postcard, the addressee should promptly review the postcard to ensure that all
documents and all pages were received by PTO.

2.10 Drawing Requirements

Information on drawing requirements is based substantially on Title 37, Code of Federal Regulations, (CFR)
§1.84. There are two acceptable categories for presenting drawings in utility patent applications: black ink
(black and white) and color.

Black and white drawings are normally required. India ink, or its equivalent that secures black solid lines, must
be used for drawings. Drawings made by computer printer must be originals, not photocopies.

On rare occasions, color drawings may be necessary as the only practical medium by which the subject matter
sought to be patented in a utility patent application is disclosed. The PTO will accept color drawings in utility
patent applications and statutory invention registrations only after granting a petition explaining why the color
drawings are necessary. Any such petition must include the following:
• the appropriate fee set forth in 37 CFR §1.17(i) [or Patent Petition Fee Code 122];
• three (3) sets of color drawings; and
• the following language as the first paragraph in that portion of the specification relating to the BRIEF
DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING. If the language is not in the
specification, a proposed amendment to insert the language must accompany the petition.

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

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Photographs are not ordinarily permitted in utility patent applications. However, the PTO will accept black and
white photographs in utility patent applications only in applications in which the invention is not capable of
being illustrated in an ink drawing or where the invention is shown more clearly in a photograph. For example,
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, and
ornamental effects continue to be acceptable. Only one set of black and white photographs is required.
Furthermore, no additional processing fee is required.

Photographs must either be developed on double weight photographic paper or be permanently mounted on
Bristol board. The photographs must be of sufficient quality so that all details in the drawing are reproducible
in the printed patent.

Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings
have been satisfied.

2.11 Identification of Drawings

Identifying indicia, if provided, should include the application number or the title of the invention, your name,
docket number (if any), and the name and telephone number of a person to call if the PTO is unable to match
the drawings to the proper application. This information should be placed on the back of each sheet of
drawings a minimum distance of 1.5 cm. (5 /8 inch) down from the top of the page. In addition, a reference to
the application number (or, if an application number has not been assigned, your name) may be included in the
left hand corner of the drawing sheet, provided that reference appears within 1.5 cm. (5 /8 inch) from the top
of the sheet.

2.12 Graphic Forms in Drawings

Chemical or mathematical formulas, tables, computer program listings, and waveforms may be submitted as
drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must
be labeled as a separate figure, using brackets when necessary, to show that information is properly
integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with
time extending along the horizontal axis. Each individual waveform discussed in the specification must be
identified with a separate letter designation adjacent to the vertical axis. These may be placed in a landscape
orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in
such formulas and tables must be chosen from a block (nonscript) type font or lettering style having capital
letters which are at least 0.21 cm. (0.08 inch) high (elite type). A space at least 0.64 cm. (1 /4 inch) high should
be provided between complex formulas or tables and the text.

2.13 Paper
Drawings submitted to the PTO must be made on paper which is flexible, strong, white, smooth, nonshiny, and
durable. All sheets must be free from cracks, creases, and folds. Only one side of the sheet shall be used for
the drawing. Each sheet must be reasonably free from erasures and must be free from alterations,
overwritings, and interlineations. Photographs must either be developed on double weight photographic paper
or be permanently mounted on Bristol broad.

All drawings sheets in an application must be the same size. One of the shorter sides of the sheet is regarded
as its top. The size of the sheets on which drawings are made must be:
• 21.6 cm. by 27.9 cm. (81 /2 by 11 inches), or

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• 21.0 cm. by 29.7 cm. (DIN size A4).

The sheets must not contain frames around the sight (the usable surface), but should have scan target points
(cross hairs) printed on two catercorner margin corners. The following margins are required:
• On 21.6 cm. by 27.9 cm. (81 /2 by 11 inch) drawing sheets, each sheet must include a top margin of at
least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5
cm. (5 /8 inch), and a bottom margin of at least 1.0 cm. (3 /8 inch) from the edges, thereby leaving a sight
no greater than 17.6 cm. by 24.4 cm. (615 /16 by 95 /8 inches).
• On 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, each sheet must include a top margin of at least
2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm (5 /8
inch), and a bottom margin of at least 1.0 cm. (3 /8 inch) from the edges, thereby leaving a sight no
greater than 17.0 cm. by 26.2 cm.

2.14 Views
The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation,
section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be
used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space,
preferably in an upright position, clearly separated from one another, and must not be included in the sheets
containing the specifications, claims, or abstract. Views must not be connected by projection lines and must
not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the
relative timing of the waveforms.

2.14.1 Exploded Views

Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of
assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same
sheet as another figure, the exploded view should be placed in brackets.

2.14.2 Partial Views

When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single
sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views
drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains
parts of another partial view. A smaller scale view should be included showing the whole formed by the partial
views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification
purposes, the view and the enlarged view must each be labeled as separate views.
Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets
must be so arranged that the complete figure can be assembled without concealing any part of any of the
views appearing on the various sheets.
A very long view may be divided into several parts placed one above the other on a single sheet. However, the
relationship between the different parts must be clear and unambiguous.

2.14.3 Sectional Views

The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by
a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to
the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching
must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel
lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not
impede the clear reading of the reference characters and lead lines. If it is not possible to place reference

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characters outside the hatched area, the hatching may be broken off wherever reference characters are
inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°.

A cross section must be set out and drawn to show all of the materials as they are shown in the view from
which the cross section was taken. The parts in cross section must show proper material(s) by hatching with
regularly spaced parallel oblique strokes; the space between strokes being chosen on the basis of the total
area to be hatched. The various parts of a cross section of the same item should be hatched in the same
manner and should accurately and graphically indicate the nature of the material(s) illustrated in cross section.

The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas,
hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched.
Different types of hatching should have different conventional meanings as regards the nature of a material
seen in cross section.

2.14.4 Alternative Position

A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without
crowding; otherwise, a separate view must be used for this purpose. Alternate Position

2.14.5 Modified Forms

Modified forms of construction must be shown in separate views.

2.15 Arrangement of Views

One view must not be placed upon another or within the outline of another. All views on the same sheet should
stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright
position. If views wider than the width of the sheet are necessary for the clearest illustration of the
invention, the sheet may be turned on its side so that the top of the sheet is on the right-hand side, with the
appropriate top margin used as the heading space. Words must appear in a horizontal, left-to-right fashion
when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing
standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).

2.16 View for the Official Gazette

One of the views should be suitable for publication in the Official Gazette as the illustration of the invention.

2.17 Scale
The scale to which a drawing is made must be large enough to show the mechanism without crowding when the
drawing is reduced in size to two-thirds in reproduction. Views of portions of the mechanism on a larger scale
should be used when necessary to show details clearly. Two or more sheets may be used if one does not give
sufficient room. The number of sheets should be kept to a minimum.

When approved by the examiner, the scale of the drawing may be graphically represented. Indications such as
“actual size” or “scale ½” are not permitted on the drawings since these lose their meaning with reproduction in
a different format.

Elements of the same view must be in proportion to each other, unless a difference in proportion is
indispensable for the clarity of the view. Instead of showing elements in different proportion, a
supplementary view may be added giving a larger-scale illustration of the element of the initial view. The
enlarged element shown in the second view should be surrounded by a finely drawn or “dot-dash” circle in the
first view indicating its location without obscuring the view.

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2.18 Character of Lines, Numbers, and Letters

All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every
line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark,
and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit
adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing
cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing
where different thicknesses have a different meaning.

2.19 Shading
The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce
legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an
object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in
perspective, but not for cross sections. See discussion of sectional views above. Spaced lines for shading are
preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of
the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where
they superimpose on each other or obscure reference characters. Light should come from the upper left
corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black
shading areas are not permitted, except when used to represent bar graphs or color.

2.20 Symbols
Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which
such symbols and labeled representations are used must be adequately identified in the specification. Known
devices should be illustrated by symbols which have a universally recognized conventional meaning and are
generally accepted in the art. Other symbols which are not universally recognized may be used, subject to
approval by the PTO, if they are not likely to be confused with existing conventional symbols, and if they are
readily identifiable.

2.21 Legends
Suitable descriptive legends may be used, or may be required by the examiner, where necessary for
understanding of the drawing, subject to approval by the PTO. They should contain as few words as possible.

2.22 Numbers, Letters, and Reference Characters

The English alphabet must be used for letters, except where another alphabet is customarily used, such as the
Greek alphabet to indicate angles, wavelengths, and mathematical formulas.

Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible,
and must not be used in association with brackets or inverted commas, or enclosed within outlines (encircled).
They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference
characters should be arranged to follow the profile of the object depicted.

Numbers, letters, and reference characters must measure at least 0.32 cm. (1 /8 inch) in height. They should
not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or
mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as
indicating a surface or cross section, a reference character may be underlined and a blank space may be left in
the hatching or shading where the character occurs so that it appears distinct.
The same part of an invention appearing in more than one view of the drawing must always be designated by
the same reference character, and the same reference character must never be used to designate different
parts.

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Reference characters not mentioned in the description shall not appear in the drawings. Reference characters
mentioned in the description must appear in the drawings.

2.23 Lead Lines and Arrows

Lead lines are those lines between the reference characters and the details to which they refer. Such lines
may be straight or curved and should be as short as possible. They must originate in the immediate proximity
of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead
lines are required for each reference character except for those which indicate the surface or cross section
on which they are placed. Such a reference character must be underlined to make it clear that a lead line has
not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing.

Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
• on a lead line, a freestanding arrow to indicate the entire section towards which it points;
• on a lead line, an arrow touching a line to indicate the surface shown by the line looking along the
direction of the arrow; or
• to show the direction of movement.

2.24 Copyright or Mask Work Notice

A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing
immediately below the figure representing the copyright or mask work material and be limited to letters
having a print size of 0.32 cm. to 0.64 cm. (1 /8 to ¼ inches) high. The content of the notice must be limited to
only those elements provided for by law. For example, “©1983 John Doe” (17 U.S.C. 401) and “*M* John Doe”
(17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright
and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the
authorization language set forth in 37 CFR §1.71(e) is included at the beginning (preferably as the first
paragraph) of the specification.

2.25 Numbering of Sheets of Drawings and Views

The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight
(the usable surface). These numbers, if present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the
middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two
Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second
being the total number of sheets of drawings, with no other marking.

The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the
numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial
views intended to form one complete view, on one or several sheets, must be identified by the same number
followed by a capital letter. View numbers must be preceded by the abbreviation FIG. Where only a single
view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation
FIG. must not appear.

Numbers and letters identifying the views must be simple and clear and must not be used in association with
brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference
characters.

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2.26 Security Markings

Authorized security markings may be placed on the drawings provided they are outside the sight, preferably
centered in the top margin.

2.27 Corrections
Any corrections on drawings submitted to the PTO must be durable and permanent.

2.28 Holes
No holes should be made by the applicant in the drawing sheets.

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3.0 A Guide to Filing A Design Patent Application

U.S. Patent and Trademark Office (as of 10-17-00)

3.1 Definition of a Design

3.2 Types of Designs and Modified Forms
3.3 Difference Between Design and Utility Patents
3.4 Improper Subject Matter for Design Patents
3.5 Invention Development Organizations
3.6 Elements of a Design Patent Application
3.7 The Preamble
3.8 The Title
3.9 The Figure Descriptions
3.10 A Single Claim
3.11 Drawings or Photographs
3.12 The Views
3.13 Surface Shading and Drafting Symbols
3.14 Broken Lines
3.15 Photographs
3.16 The Oath or Declaration
3.17 Disclosure Examples
3.18 The Design Patent Application Process
3.19 Drawing Examples
3.20 Symbols for Draftsmen
3.21 Patent Laws That Apply to Design Patent Applications
3.22 Rules That Apply to the Drawings of a Design Patent Application
3.23 Sample Specification

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3.1 Definition of a Design

A design consists of the visual ornamental characteristics embodied in, or applied to, an article of
manufacture. Since a design is manifested in appearance, the subject matter of a design patent application
may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to
the combination of configuration and surface ornamentation. A design for surface ornamentation is
inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of
surface ornamentation, applied to an article of manufacture.

The Patent Law provides for the granting of design patents to any person who has invented any new, original
and ornamental design for an article of manufacture. A design patent protects only the appearance of the
article and not its structural or utilitarian features. The principal statutes (United States Code) governing
design patents are:

35 U.S.C. 171
35 U.S.C. 173
35 U.S.C. 102
35 U.S.C. 103
35 U.S.C. 112
35 U.S.C. 132

The rules (Code of Federal Regulations) pertaining to the drawing disclosure of a design patent application are:

37 CFR § 1.84
37 CFR § 1.152
37 CFR § 1.121

The following additional rules have been referred to in this guide:

37 CFR § 1.3
37 CFR § 1.63
37 CFR § 1.153

A copy of these laws and rules are included in the Appendix of this guide.

The practice and procedures relating to design patent applications are set forth in chapter 1500 of the
Manual of Examining Procedure (MPEP). Inquiries relating to the sale of the MPEP should be directed to the
Superintendent of Documents, United States Government Printing Office, Washington, D.C. 20402. Telephone:
+1-202-512-1800.

3.2 Types of Designs and Modified Forms

An ornamental design may be embodied in an entire article or only a portion of an article, or may be
ornamentation applied to an article. If a design is directed to just surface ornamentation, it must be shown
applied to an article in the drawings, and the article must be shown in broken lines, as it forms no part of the
claimed design.

A design patent application may only have a single claim. 37 CFR § 1.153. Designs that are independent and
distinct must be filed in separate applications since they cannot be supported by a single claim. Designs are
independent if there is no apparent relationship between two or more articles. For example, a pair of

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eyeglasses and a door handle are independent articles and must be claimed in separate applications. Designs
are considered distinct if they have different shapes and appearances even though they are related articles.
For example, two vases having different surface ornamentation creating distinct appearances must be claimed
in separate applications. However, modified forms, or embodiments of a single design concept may be filed in
one application. For example, vases with only minimal configuration differences may be considered a single
design concept and both embodiments may be included in a single application. An example of modified forms
appears in Appendix II.

3.3 The Difference Between Design and Utility Patents

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a
“design patent” protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be
obtained on an article if invention resides both in its utility and ornamental appearance. While utility and
design patents afford legally separate protection, the utility and ornamentality of an article are not easily
separable. Articles of manufacture may possess both functional and ornamental characteristics.

3.4 Improper Subject Matter for Design Patents

A design for an article of manufacture that is dictated primarily by the function of the article lacks
ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. Similarly, a design for an article
of manufacture that is hidden in its end use and whose ornamental appearance is of no commercial concern
prior to reaching its end use, lacks ornamentality and is not proper statutory subject matter under 35 U.S.C.
171. In addition, 35 U.S.C. 171 requires that a design to be patentable must be “original”. Clearly a design which
simulates a well-known, or naturally occurring object or person is not original as required by the statute.
Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or
nationality is not proper subject matter for a Design Patent Application (35 U.S.C. 171 and 37 CFR § 1.3).

3.5 Invention Development Organizations

Invention Development Organizations (IDO) are private and public consulting and marketing businesses that
exist to help inventors bring their inventions to market, or to otherwise profit from their ideas. While many of
these organizations are legitimate, some are not. Be wary of any IDO that is willing to promote your invention
or product without making a detailed inquiry into the merits of your idea and giving you a full range of options
which may or may not include the pursuit of patent protection. Some IDOs will automatically recommend that
you pursue patent protection for your idea with little regard for the value of any patent that may ultimately
issue. For example, an IDO may recommend that you add ornamentation to your product in order to render it
eligible for a design patent, but not really explain to you the purpose or effect of such a change. Because
design patents protect only the appearance of an article of manufacture, it is possible that minimal
differences between similar designs can render each patentable. Therefore, even though you may ultimately
receive a design patent for your product, the protection afforded by such a patent may be somewhat limited.
Finally, you should also be aware of the broad distinction between utility and design patents, and realize that a
design patent may not give you the protection desired.

3.6 Elements of a Design Patent Application

The elements of a design patent application should include the following:
(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) Description of the figure(s) of the drawing;
(3) Feature description;
(4) A single claim;
(5) Drawings or photographs;

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(6) Executed oath or declaration.

In addition, the filing fee set forth in 37 CFR 1.16(f) is also required. See insert for schedule of current fees.
If applicant is a small entity, (an independent inventor, a small business concern, or a non-profit organization),
the filing fee is reduced by half if the small entity files a Statement Claiming Small Entity Status
(PTO/SB/09 - see insert for sample form).

3.7 The Preamble

The 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. All information
contained in the preamble will be printed on the patent, should the claimed design be deemed patentable.

3.8 The Title

The Title of the design must identify the article in which the design is embodied by the name generally known
and used by the public. Marketing designations are improper as titles and should not be used. 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, as well as 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
published. Thus, applicants are encouraged to provide a specific and descriptive title.

3.9 The Figure Descriptions

The Figure Descriptions indicate what each view of the drawings represents, i.e., front elevation, top plan,
perspective view, etc.
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 drawing is the design’s best description. However, while not
required, a special description is not prohibited.

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 (i.e., “the right side elevational view is a mirrorimage of the left side”).
2. Description disclaiming portions of the article not shown, that form no part of the claimed design.
3. Statement indicating that any broken line illustration of environmental structure in the drawing is not part
of the design sought to be patented.
4. Description denoting the nature and environmental use of the claimed design, if not included in the
preamble.

3.10 A Single Claim

A design patent application may only include a single claim. The claim defines the design which applicant wishes
to patent, in terms of the article in which it is embodied or applied. The claim must 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.

When there is a properly included special description of the design in the specification, or a proper showing of
modified forms of the design, or other descriptive matter has been included in the specification, the words
“and described” should be added to the claim following the term “shown”, and the claim should read “The
ornamental design for (the article which embodies the design or to which it is applied) as shown and
described.”

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3.11 Drawings or Photographs

The drawing disclosure is the most important element of the application. 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, that nothing regarding the design sought to be patented is left to conjecture. The design drawing or
photograph must comply with the disclosure requirements of 35 U.S.C. 112, first paragraph. To meet the
disclosure requirements of 35 U.S.C. 112, the drawings or photographs must include a sufficient number of
views to constitute a complete disclosure of the appearance of the design claimed.

Drawings are normally required to be in black ink on white paper. Photographs, in lieu of drawings, are
permitted subject to the requirements of 37 CFR §1.84 and §1.152. Applicant should refer to these rules,
included in Appendix II of this guide. These rules set forth in detail the requirements for proper drawings in a
design patent application.

3.12 The Views

The drawings or photographs should contain a sufficient number of views to completely disclose the
appearance of the claimed design, i.e., front, rear, right and left sides, top and bottom. While not required, it
is suggested that perspective views be submitted to clearly show the appearance and shape 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 duplicates of other views of the design or that are merely flat and include no
ornamentality may be omitted from the drawing if the specification makes this explicitly clear. For example, if
the left and right sides of a design are identical or symmetrical, a view should be provided of one side and a
statement made in the drawing description that the other side is identical/symmetrical. If the bottom of the
design is flat, a view of the bottom may be omitted if the figure descriptions include a statement that the
bottom is flat and unornamented. The term “unornamented” should not be used to describe visible surfaces
which include structure that is clearly not flat. In some cases, the claim may be directed to an entire article,
but because all sides of the article may not be visible during normal use, it is not necessary to disclose them. A
sectional view which more clearly brings out elements of the design is permissible, however a sectional view
presented to show functional features, or interior structure not forming part of the claimed design, is neither
required, nor permitted.

3.13 Surface Shading and Drafting Symbols

The drawing should be provided with appropriate surface shading which shows 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 design. Solid black surface shading is not permitted
except when used to represent the black color as well as color contrast. Lack of appropriate surface shading in
the drawing as filed may render the design nonenabling under 35 U.S.C. 112, first paragraph. Additionally, if
the shape of the design is not evident from the disclosure as filed, the addition of surface shading after filing
may be viewed as new matter. New matter is anything that is added to, or deleted from, the claim, drawings or
specification, that was neither shown nor suggested in the original application (see 35 U.S.C. 132 and 37 CFR §
1.121 in Appendix III and IV, respectively).

3.14 Broken Lines

A broken line disclosure is understood to be for illustrative purposes only and forms no part of the claimed
design. Structure that is not part of the claimed design, but is considered necessary to show the environment

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in which the design is used, 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.

When the claim is directed to just surface ornamentation for an article, the article in which it is embodied
must be shown in broken lines.

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. 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.

3.15 Photographs
The Office will accept high quality black and white photographs in design patent applications only after the
granting of a petition filed under 37 CFR §1.84(b)(1) requesting that photographs be accepted. Petitions to
accept photographs as drawings will be considered by the Primary Patent Examiner and will be granted if the
requirements of 37 CFR § 1.84(b) are complied with. That is, the appropriate fee set forth in 37 CFR § 1.17(h)
has been included and the three sets of photographs required under 37 CFR §1.84(b)(1)(ii) have been included.
If other provisions of 37 CFR §1.84(b) for photographs have not been complied with (e.g., the photographs are
not on double weight photographic paper, are not properly mounted, or details are not adequately
reproducible), such lack of compliance will not bar the grant of a petition to accept the photographs but
rather will form the basis of subsequent objection to the quality of the photographic disclosure. If the
details, appearance and shape of all the features and portions of the design are not clearly disclosed in the
photographs, this also will not be a bar to the grant of a petition to accept the photographs but would form
the basis of a rejection of the claim under 35 U.S.C. 112, first paragraph as nonenabling.
Photographs submitted on double weight photographic paper must have the drawing figure number entered on
the face of the photograph. Photographs mounted on Bristol board may have the figure number shown in black
ink on the Bristol board proximate the corresponding photograph.

Photographs and ink drawings must not be combined in a formal submission of the visual disclosure of the
claimed design in one application. The introduction of both photographs and ink drawings in a design application
would result in a high probability of inconsistencies between corresponding elements on the ink drawings as
compared with the photographs. Photographs submitted in lieu of ink drawings must not disclose environmental
structure but must be limited to the claimed design itself.

Color drawings and color photographs will be accepted as formal drawings in design applications as long as they
meet the requirements set forth in 37 CFR § 1.84(a)(2).

If color photographs are submitted as informal drawings and the applicant does not consider the color to be
part of the claimed design, a disclaimer must be added to the specification as follows: “The color shown on the
claimed design forms no part thereof.” Color will be considered an integral part of the disclosed and claimed
design in the absence of a disclaimer filed with the original application. If no disclaimer has been included, the
omission of color in the later filed formal drawings will be treated as introducing new matter into the claim, 35
U.S.C. 132. A disclaimer may only be used when filing informal drawings as 37 CFR § 1.152(a)(2) requires that
the disclosure in formal photographs be limited to the design for the article claimed.

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3.16 The Oath or Declaration

The oath or declaration required of the applicant must comply with the requirements set forth in 37 CFR
§1.63 (see insert for sample declaration form and see Appendix IV for a copy of the rule).
So that the applicant will better understand what constitutes a complete disclosure, examples of drawing
disclosures and their accompanying specifications are provided on the following pages.

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3.17 Disclosure Examples

Example 1 - Disclosure of the Entire Article

To the Commissioner of Patents and Trademarks:

Your petitioner, John Doe, a citizen of the United States and a resident of Alexandria, VA, prays that letters
patent may be granted for the design for a jewelry cabinet, as set forth in the following specification. The
claimed jewelry cabinet is used to
store jewelry and could sit on a bureau.
Fig. 1 is a front elevational view of a jewelry cabinet showing my new design;
Fig. 2 is a rear elevational view thereof;
Fig. 3 is a left side elevational view thereof;
Fig. 4 is a right side elevational view thereof;
Fig. 5 is a top plan view thereof; and
Fig. 6 is a bottom plan view thereof.

I claim: the ornamental design for a jewelry cabinet as shown.

Specification

Drawing Disclosure

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Example 2 - Disclosure of only the surfaces of an article that are visable during use (no bottom view or
description necessary)

To the Commissioner of Patents and Trademarks:

Your petitioner, John Doe, a citizen of the United States and a resident of Alexandria, VA, prays that letters
patent may be granted for the design for a jewelry cabinet, as set forth in the following specification. The
claimed jewelry cabinet is used for
storing jewelry and could sit on a bureau.
Fig. 1 is a front elevational view of a jewelry cabinet showing my new design;
Fig. 2 is a rear elevational view thereof;
Fig. 3 is a left side elevational view thereof;
Fig. 4 is a right side elevational view thereof;
Fig. 5 is a top plan view thereof.

I claim: the ornamental design for a jewelry cabinet as shown.

Specification

Drawing Disclosure

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Example 3 - Disclosure of only the surfaces of an article that are visible during use - The rear view
disclosed by description

To the Commissioner of Patents and Trademarks:

Your petitioner, John Doe, a citizen of the United States and a resident of Alexandria, VA, prays that letters
patent may be granted for the design for a jewelry cabinet, as set forth in the following specification. The
claimed jewelry cabinet is used for
storing jewelry and could sit on a bureau.
Fig. 1 is a front elevational view of a jewelry cabinet showing my new design;
Fig. 2 is a left side elevational view thereof;
Fig. 3 is a right side elevational view thereof, and
Fig. 4 is a top plan view thereof.
The rear of the jewelry cabinet is flat and unornamented.

I claim: the ornamental design for a jewelry cabinet as shown

Specification

Drawing Disclosure

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Example 4 - Disclosure of only the surfaces of an article that comprise the claimed design (no bottom
view or description necessary)

To the Commissioner of Patents and Trademarks:

Your petitioner, John Doe, a citizen of the United States and a resident of Alexandria, VA, prays that letters
patent may be granted for the design for a jewelry cabinet, as set forth in the following specification. The
claimed jewelry cabinet is used for
storing jewelry and could sit on a bureau.
Fig. 1 is a front elevational view of a jewelry cabinet showing my new design;
Fig. 2 is a left side elevational view thereof;
Fig. 3 is a right side elevational view thereof, and
Fig. 4 is a top plan view thereof.
The rear of the jewelry cabinet forms no part of the claimed design.

I claim: the ornamental design for a jewelry cabinet as shown and described.

Specification

Drawing Disclosure

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Example 5 - Disclosure of a surface pattern as the claimed design, applied to an article

To the Commissioner of Patents and Trademarks:

Your petitioner, John Doe, a citizen of the United States and a resident of Alexandria, VA, prays that letters
patent may be granted for the design for a surface pattern applied to a jewelry cabinet, as set forth in the
following specification.
Fig. 1 is a front elevational view of a surface pattern applied to a jewelry cabinet showing my new
design;
Fig. 2 is a left side elevational view thereof, the right side being a mirror image.
The jewelry cabinet is shown in broken lines for illustrative purposes only and forms no part of the
claimed design.

I claim: the ornamental design for a surface pattern applied

Specification

Drawing Disclosure

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3.18 The Design Patent Application Process

The preparation of a design patent application and the conducting of the proceedings in the Patent and
Trademark Office to obtain the patent is an undertaking requiring the knowledge of patent law and rules and
Patent and Trademark practice and procedures. A patent attorney or agent specially trained in this field is
best able to secure the greatest patent protection to which applicant is entitled. It would be prudent to seek
the services of a registered patent attorney or agent. Representation, however, is not required. A
knowledgeable applicant may successfully prosecute his or her own application. However, while a patent may be
obtained in many cases by persons not skilled in this work, there is no assurance that the patent obtained
would adequately protect the particular design.

Of primary importance in a design patent application is the drawing disclosure, which illustrates the design
being claimed. Unlike a utility application, where the “claim” describes the invention in a lengthy written
explanation, the claim in a design patent application protects the overall visual appearance of the design,
“described” in the drawings. It is essential that the applicant present a set of drawings (or photographs) of
the highest quality which conform to the rules and standards which are reproduced in this guide. Changes to
these drawings after the application has been filed, may introduce new matter which is not permitted by law
(35 U.S.C. 132). It is in applicant’s best interest to ensure that the drawing disclosure is clear and complete
prior to filing the application, since an incomplete or poorly prepared drawing may result in a fatally defective
disclosure which cannot become a patent. It is recommended that applicant retain the services of a
professional draftsperson who specializes in preparing design patent drawings. Examples of acceptable
drawings and drawing disclosures are included in this Guide so that applicant will have some idea of what is
required and can prepare the drawings accordingly.

In addition to the drawing disclosure, certain other information is necessary. While no specific format is
required, it is strongly suggested that applicant follow the formats presented to ensure that the application is
complete.

When a complete design patent application, along with the appropriate filing fee, is received by the Patent and
Trademark Office, it is assigned an Application Number and a Filing Date. A “Filing Receipt” containing this
information is sent to the applicant.

The application is then assigned to an examiner. Applications are examined in order of their filing date.

The actual “examination” entails checking for compliance with formalities, ensuring completeness of the
drawing disclosure, and a comparison of the claimed subject matter with the “prior art”. “Prior art” consists of
issued patents and published materials. If the claimed subject matter is found to be patentable, the
application will be “allowed” and instructions will be provided to applicant for completing the process to permit
issuance as a patent.

The examiner may reject the claim in the application if the disclosure cannot be understood or is incomplete,
or if a reference or combination of references, found in the prior art, shows the claimed design to be
unpatentable. The examiner will then issue an Office action detailing the rejection and addressing the
substantive matters which effect patentability. This Office Action may also contain suggestions by the
examiner for amendments to the application. Applicant should keep this Office action for his or her files, and
not send it back to the Office.

If, after receiving an Office action, applicant elects to continue prosecution of the application, a timely reply
to the action must be submitted. This reply should include a request for reconsideration or further

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examination of the claim, along with any amendments desired by the applicant, and must be made in writing.
The reply must distinctly and specifically point out the supposed errors in the Office action and must address
every objection and/or rejection in the action. If the examiner has rejected the claim over prior art, a general
statement by the applicant that the claim is patentable, without specifically pointing out how the design is
patentable over the prior art, does not comply with the rules.

In all cases where the examiner has said that a reply to a requirement is necessary, or where the examiner has
indicated patentable subject matter, the reply must comply with the requirements set forth by the examiner,
or specifically argue each requirement as to why compliance should not be required.

In any communication with the Office, applicant should include the following items:
1. Application number (checked for accuracy).
2. Group art unit number (copied from filing receipt or most recent Office Action).
3. Filing date.
4. Name of the examiner who prepared the most recent Office action.
5. Title of invention.

It is applicant’s responsibility to make sure that the reply is received by the Office prior to the expiration of
the designated time period set for reply. This time period is set to run from the “Date Mailed,” which is
indicated on the first page of the Office action. If the reply is not received within the designated time
period, the application will be considered abandoned. In the event that applicant is unable to reply within the
time period set in the Office action, abandonment may be prevented if a reply is filed within six (6) months
from the mail date of the Office action provided a petition for extension of time and the fee set forth in 37
CFR § 1.17(a) are filed. The fee is determined by the amount of time requested, and increases as the length of
time increases. These fees are set by Rule and could change at any time. An “Extension of Time” does not have
to be obtained prior to the submission of a reply to an Office Action; it may be mailed along with the reply.
See insert for a schedule of current fees. Note: an extension of time cannot be obtained when responding to a
“Notice of Allowance.”

To ensure that a time period set for reply to an Office Action is not missed, a “Certificate of Mailing” should
be attached to the reply. This “Certificate” establishes that the reply is being mailed on a given date. It also
establishes that the reply is timely, if it was mailed before the period for reply had expired and if it is mailed
with the United States Postal Service. A “Certificate of Mailing” is not the same as “Certified Mail”. A
suggested format for a Certificate of Mailing is as follows:
“I hereby certify that this correspondence is being deposited with the United States Postal Service as first
class mail in an envelope addressed to: Box Design, Assistant Commissioner for Patents, Washington, D.C.
20231, on (DATE MAILED)”
(Name - Typed or Printed)

Signature

Date

If a receipt for any paper filed in the PTO is desired, applicant should include a stamped, self-addressed
postcard, which lists, on the message side applicant’s name and address, the application number, and filing
date, the types of papers submitted with the reply (i.e., 1 sheet of drawings, 2 pages of amendments, 1 page of

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an oath/declaration, etc.). This postcard will be stamped with the date of receipt by the Mail Room and
returned to applicant. This postcard will be applicant’s evidence that the reply was received by the Office on
that date.

If applicant changes his or her mailing address after filing an application, the Office must be notified in
writing of the new address. Failure to do so will result in future communications being mailed to the old
address, and there is no guarantee that
these communications will be forwarded to applicant’s new address. Applicant’s failure to receive, and properly
reply to,
these Office communications will result in the application being held abandoned. Notification of “Change of
Address”
should be made by separate letter, and a separate notification should be filed for each application.

Upon submission of a reply to an Office action, the application will be reconsidered and further examined in
view of applicant’s remarks and any amendments included with the reply. The examiner will then either
withdraw the rejection and allow the application or, if not persuaded by the remarks and/or amendments
submitted, repeat the rejection and make it Final. Applicant may file an appeal with the Board of Patent
Appeals and Interferences after given a final rejection or after the claim has been rejected twice. Applicant
may also file a new application prior to the abandonment of the original application, claiming benefit of the
earlier filing date. This will allow continued prosecution of the claim.

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3.19 Drawing Examples

The two types of shading commonly employed in Design Patent Application drawings are straight line surface
shading and stippling. Individually or in combination, they can effectively represent the character and contour
of most drawing surfaces.

Straight Line Surface Shading

Watch Door Lock Housing

Antenna Insulator Sink

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Lawn Sprinkler Vacuum Cleaner

Toilet Tissue Holder Toilet Tissue Holder

First Embodiment Second Embodiment

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Stippling

Puppet Shower Caddy

Combination of Straight Line Shading and Stippling

Note that both stippling and straight line surface shading, while permissible on the same object to show
surface contrast, should not be used together on the same surface.

Door Knob Chair Cap

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Transparent Materials
Note that elements visible behind transparent surfaces should be shown in light, full lines, not broken lines.

Acquarium Perfume Bottle

Broken Line Disclosure

Handle Unit Cutter

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Exploded View

An exploded view is only supplementary to a fully assembled view. A bracket must be employed to show the
association of elements.

Set of Game Components - Fully Assembled View Set of Game Components - Exploded View

Personal Computer

Indeterminate Length

Note the use of a separation and a bracket to indicate that, for ease of illustration, the precise length of the
molding is not claimed.

Picture Frame Molding

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Cross-sectional View

Cross-sections may be employed to clarify the disclosure and to minimize the number of views.

Christmas Tree Stand

Specific Materials

Multi-Pocketed Storage Bag Combined Toilet Tissue Holder and Wall Cabinet

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3.20 Symbols for Draftsmen

Rule 84(g) states that graphical symbols for conventional elements may be used on the drawing when
appropriate, subject to approval by the Office. The symbols and other conventional devices which follow have
been and are approved for such use. This collection does not purport to be exhaustive, other standard and
commonly used symbols will also be acceptable provided they are clearly understood, are adequately identified
in the specification as filed, and do not create confusion with other symbols used in patent drawings.

NOTES: In general, in lieu of a symbol, a conventional element, combination or circuit may be shown by an
appropriately labeled rectangle, square or circle; abbreviations should not be used unless their meaning is
evident and not confusing with the abbreviations used in the suggested symbols.

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3.21 Patent Laws That Apply to Design Patent Applications

35 U.S.C. 171 Patents for Designs

Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent
therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as
otherwise provided.

35 U.S.C. 173 Term of Design Patent

Patents for designs shall be granted for the term of fourteen years from the date of grant.

35 U.S.C. 102 Conditions for Patentability; Novelty and Loss of Right to Patent
A person shall be entitled to a patent unless
(a) the invention was known or used by others in this country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use
or on sale in this country, more than one year prior to the date of the application for patent in the United
States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate,
by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application
for patent in this country on an application for patent or inventor’s certificate filed more than twelve months
before the filing of the application in the United States, or
(e) the invention was described in a patent granted on an application for patent by another filed in the United
States before the invention thereof by the applicant for patent, or on an international application by another
who has fulfilled the requirements of paragraphs (1), (2), and (4) of 371(c) of this title before the invention
thereof by applicant for patent, or
(f) he did not himself invent the subject matter sought to be patented, or
(g) before the applicant’s invention thereof the invention was made in this country by another who had not
abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only
the respective dates of conception and reduction to practice of the invention, but also the reasonable
diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by
the other.

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
102 of this title, if the differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be
negatived by the manner in which the invention was made.
(b) 1. Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under
this subsection, a biotechnological process using or resulting in a composition of matter that is novel under
section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if -
(A) claims to the process and composition of matter are contained in either the same application for
patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same
person or subject to an obligation of assignment to the same person.

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2. A patent issued on a process under paragraph (1)

(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date
as such other patent, notwithstanding section 154.
3. For purposes of paragraph (1), the term “biotechnological process” means -
(A) a process of genetically altering or otherwise inducing a single- or multi- celled organism to -
(i)express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclinal
antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a
combination subparagraphs (A) and (B).
(c) Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g)
of 102 of this title, shall not preclude patentability under this section where the subject matter and the
claimed invention were, at the time the invention was made, owned by the same person or subject to an
obligation of assignment to the same person.

35 U.S.C. 112 Specification

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 of carrying out his invention.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent
form.
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously
set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall
be construed to incorporate by reference all the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim
previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent
claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be
construed to incorporate by reference all the limitations of the particular claim in relation to which it is being
considered. An element in a claim for a combination may be expressed as a means or step for performing a
specified function without the recital of structure, material, or acts in support thereof, and such claim shall
be construed to cover the corresponding structure, material, or acts described in the specification and
equivalents thereof.

35 U.S.C. 132 Notice of rejection; reexamination.

Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the
Commissioner shall notify the applicant thereof, stating the reasons for such rejection, or objection or
requirement, together with such information and references as may be useful in judging of the propriety of
continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his
claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall
introduce new matter into the disclosure of the invention .

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3.22 Rules That Apply to the Drawings of a Design Patent Application

37 CFR 1.84 Standards for Drawings

(a) Drawings
There are two acceptable categories for presenting drawings in utility patent applications:
(1) Black ink - Black and white drawings are normally required. India ink, or its equivalent that secures solid
black lines, must be used for drawings, or
(2) Color - On rare occasions, color drawings may be necessary as the only practical medium by which to
disclose the subject matter sought to be patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will accept color drawings in utility patent
applications and statutory invention registrations only after granting a petition filed under this paragraph
explaining why the color drawings are necessary. Any such petition must include the following:
(i)-The fee set forth in §1.17(I);
(ii) - Three (3) sets of color drawings; and
(iii) - The specification must contain the following language as the first paragraph in that portion of the
specification relating to the brief description of the drawing: “The file of this patent contains at least one
drawing executed in color. Copies of this patent with color drawing(s) will be provided by the Patent and
Trademark Office upon request and payment of the necessary fee.” If the language is not in the specification,
a proposed amendment to insert the language must accompany the petition.
(b) Photographs
(1) Black and White - Photographs are not ordinarily permitted in utility patent applications. However, the
Office will accept photographs in utility patent applications only after the granting of a petition filed under
this paragraph which requests that photographs be accepted. Any such petition must include the following:
(i)-The fee set forth in §1.17(I); and
(ii)-Three (3) sets of photographs. Photographs must either be developed on double weight photographic paper
or be permanently mounted on bristol board. The photographs must be of sufficient quality so that all details
in the drawings are reproducible in the printed patent.
(2) Color - Color photographs will be accepted in utility patent applications if the conditions for accepting color
drawings have been satisfied. See paragraph (a)(2) of this section.
(c) Identification of drawings Identifying indicia, if provided, should include the application number or the
title of the invention, inventor’s name, docket number (if any), and the name and telephone number of a person
to call if the Office is unable to match the drawings to the proper application. This information should be
placed on the back of each sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down from the top of
the page. In addition, a reference to the application number, or, if an application number has not been
assigned, the inventor’s name, may be included in the left-hand corner, provided that the reference appears
within 1.5 cm (5/8 inch) from the top of the sheet.
(d) Graphic forms in drawings Chemical or mathematical formulae, tables, and waveforms may be
submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical
formula must be labeled as a separate figure, using brackets when necessary, to show that information is
properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical
axis with time extending along the horizontal axis. Each individual waveform discussed in the specification
must be identified with a separate letter designation adjacent to the vertical axis.
(e) Type of paper - Drawings submitted to the Office must be made on paper which is flexible, strong,
white, smooth, non-shiny, and durable. All sheets must be free from cracks, creases, and folds. Only one side
of the sheet shall be used for the drawing. Each sheet must be reasonably free from erasures and must be
free from alterations, overwriting, and interlineation. Photographs must either be developed on double weight
photographic paper or be permanently mounted on bristol board. See paragraph (b) of this section for other
requirements for photographs.

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Size of paper - All drawing sheets in an application must be the same size. One of the shorter sides of the
sheet is regarded as its top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1 / 2 by 11 inches).
Margins - The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan
target points (i.e., cross-hairs), printed on two catercorner margin corners. Each sheet must include a top
margin of at least 2.5 cm. (1 inch), a left side margin of a least 2.5 cm. (1 inch), a right side margin of at least
1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than
17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6
cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 ½ by 11 inch) drawing sheets.
(h) Views - The drawing must contain as many views as necessary to show the invention. The views may be
plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if
necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s)
without wasting space, preferably in an upright position, clearly separated from one another, and must not be
included in the sheets containing the specifications, claims, or abstract. Views must not be connected by
projection lines and must not contain center lines. Waveforms of electrical signals may be connected by
dashed lines to show the relative timing of the waveforms.
(1) Exploded views - Exploded views, with the separated parts embraced by a bracket, to show the
relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure
which is on the same sheet as another figure, the exploded view should be placed in brackets.
(2) Partial views - When necessary, a view of a large machine or device in its entirety may be broken into
partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding
the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that
no partial view contains parts of another partial view. A smaller scale view should be included showing the
whole formed by the partial views and indicating the positions of the parts shown. When a portion o f a view is
enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
(i) Where views on two or more sheets form, in effect, a single complete view, the views on the several
sheets must be so arranged that the complete figure can be assembled without concealing any part of any of
the views appearing on the various sheets.
(ii) A very long view may be divided into several parts placed one above the other on a single sheet. However,
the relationship between the different parts must be clear and unambiguous.
(3) Sectional views - The plane upon which a sectional view is taken should be indicated on the view from
which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman
numerals corresponding to the view number of the sectional view, and should have arrows to indicate the
direction of sight. Hatching must be used to indicate section portions of an object, and must be made by
regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without
difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is
not possible to place reference characters outside the hatched area, the hatching may be broken off
wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes
or principal lines, preferably 45 degrees. A cross section must be set out and drawn to show all of the
materials as they are shown in the view from which the cross section was taken. The parts in cross section
must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between
strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the
same item should be hatched in the same manner and should accurately and graphically indicate the nature of
the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be
angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the
entire inside of the outline of the area to be hatched. Different types of hatching should have different
conventional meanings as regards the nature of a material seen in cross section.

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(4) Alternate position - A moved position may be shown by a broken line superimposed upon a suitable view
if this can be done without crowding; otherwise, a separate view must be used for this purpose.
(5) Modified forms - Modified forms of construction must be shown in separate views.
(i) Arrangement of views - One view must not be placed upon another or within the outline of another. All views
on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the
sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest
illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the
appropriate top margin to be used as the heading space, is on the right-hand side. Words must appear in a
horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right
side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the
axis of ordinates (of Y).
(j) View for Official Gazette - One of the views should be suitable for publication in the Official Gazette
as the illustration of the invention.
(k) Scale
(1) The scale to which a drawing is made must be large enough to show the mechanism without crowding
when the drawing is reduced in size to two-thirds in reproduction. Views of portions of the mechanism on a
larger scale should be used when necessary to show details clearly. Two or more sheets may be used if one
does not give sufficient room. The number of sheets should be kept to a minimum.
(2) When approved by the examiner, the scale of the drawing may be graphically represented. Indications
such as “actual size” or “scale 1 / 2” on the drawings, are not permitted, since these lose their meaning with
reproduction in a different format.
(3) Elements of the same view must be in proportion to each other, unless a difference in proportion is
indispensable for the clarity of the view. Instead of showing elements in different proportion, a
supplementary view may be added giving a larger-scale illustration of the element of the initial view. The
enlarged element shown in the second view should be surrounded by a finely drawn or “dot-dash” circle in the
first view indicating its location without obscuring the view.
(l) Character of Lines, Numbers, and Letters - All drawings must be made by a process which will give
them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black
(except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of
all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all
lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of
different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
(m) Shading - The use of shading in views is encouraged if it aids in understanding the invention and if it
does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical
elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts
shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading
are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest
of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except
where they superimpose on each other or obscure reference characters. Light should come from the upper
left corner at an angle of 45 degrees. Surface delineations should preferably be shown by proper shading.
Solid black shading areas are not permitted, except when used to represent bar graphs or color.
(n) Symbols - Graphical drawing symbols may be used for conventional elements when appropriate. The
elements for which such symbols and labeled representations are used must be adequately identified in the
specification. Known devices should be illustrated by symbols which have a universally recognized conventional
meaning and are generally accepted in the art. Other symbols which are not universally recognized may be
used, subject to approval by the Office, if they are not likely to be confused with existing conventional
symbols, and if they are readily identifiable.

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(o) Legends - Suitable descriptive legends may be used, or may be required by the Examiner, where
necessary for understanding of the drawing, subject to approval by the Office. They should contain as few
words as possible.
(p) Numbers, Letters, and Reference Characters
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and
legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g.,
encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet.
Reference characters should be arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as
the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least .32 cm. (1 / 8 inch) in height. They
should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not
cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary,
such as indicating a surface or cross section, a reference character may be underlined and a blank space may
be left in the hatching or shading where the character occurs so that it appears distinct.
(4) The same part of an invention appearing in more than one view of the drawing must always be designated by
the same reference character, and the same reference character must never be used to designate different
parts.
(5) Reference characters not mentioned in the description shall not appear in the drawings. Reference
characters mentioned in the description must appear in the drawings.
(q) Lead lines - Lead lines are those lines between the reference characters and the details referred to. Such
lines may be straight or curved and should be as short as possible. They must originate in the immediate
proximity of the reference character and extend to the feature indicated. Lead lines must not cross each
other. Lead lines are required for each reference character except for those which indicate the surface or
cross section on which they are placed. Such a reference character must be underlined to make it clear that a
lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing.
See paragraph (l) of this section.
( r) Arrows - Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction
of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice A copyright or mask work notice may appear in the drawing, but must be
placed within the sight of the drawing immediately below the figure representing the copyright or mask work
material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to ¼ inches) high. The content
of the notice must be limited to only those elements provided for by law. For example, “ © 1983 John Doe” (17
U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally
sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will
be permitted only if the authorization language set forth in §1.71(e) is included at the beginning (preferably as
the first paragraph) of the specification.
(t) Numbering of Sheets of Drawings The sheets of drawings should be numbered in consecutive Arabic
numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be
placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the numbers used as reference
characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on
either side of an oblique line, with the first being the sheet number and the second being the total number of
sheets of drawings, with no other marking.

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(u) Numbering of Views - The different views must be numbered in consecutive Arabic numerals, starting with
1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the
drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be
identified by the same number followed by a capital letter. View numbers must be preceded by the
abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must
not be numbered and the abbreviation “FIG.” must not appear.
Numbers and letters identifying the views must be simple and clear and must not be used in association with
brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference
characters.
(v) Security Markings - Authorized security markings may be placed on the drawings provided they are outside
the sight, preferably centered in the top margin.
(w) Corrections - Any corrections on drawings submitted to the Office must be durable and permanent.
(x) Holes - No holes should be made by applicant in the drawing sheets. (See §1.152 for design drawings,
§1.165 for plant drawings, and §1.174 for reissue drawings).

37 CFR 1.152 Design drawings

(a)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.
(1)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 which 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.
(2)Color photographs and color drawings are not permitted in design applications in the absence of a grantable
petition pursuant to §1.84(a)(2). 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
comply with §1.84(b) and must not disclose environmental structure but must be limited to the design for the
article claimed.
(b) Any detail shown in the ink or color drawings or photographs (formal or informal) deposited with the
original application papers constitutes an integral part of the disclosed and claimed design, except as
otherwise provided in this paragraph. This detail may include, but is not limited to, color or contrast, graphic
or written indicia, including identifying indicia of a proprietary nature, surface ornamentation on an article, or
any combination thereof.
(1) When any detail shown in informal drawings or photographs does not constitute an integral part of the
disclosed and claimed design, a specific disclaimer must appear in the original application papers either in the
specification or directly on the drawings or photographs. This specific disclaimer in the original application
papers will provide antecedent basis for the omission of the disclaimed detail(s) in later-filed drawings or
photographs.
(2) When informal color drawings or photographs are deposited with the original application papers without a
disclaimer pursuant to paragraphs (b)(1) of this section, formal color drawings or photographs, or a black and
white drawing lined to represent color, will be required.

37 CFR 1.121 Manner of making amendments

(a) Amendments in nonprovisional applications, other than reissue applications: Amendments in nonprovisional
applications, excluding reissue applications, are made by filing a paper, in compliance with §1.52, directing that
specified amendments be made.
(1) Specification other than the claims. Except as provided in §1.125, amendments to add matter to, or delete
matter from, the specification, other than to the claims, may only be made as follows:

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(i) Instructions for insertions: The precise point in the specification must be indicated where an insertion is to
be made, and the matter to be inserted must be set forth.
(ii) Instructions for deletions: The precise point in the specification must be indicated where a deletion is to
be made, and the matter to be deleted must be set forth or otherwise indicated.
(iii) Matter deleted by amendment can be reinstated only by a subsequent amendment presenting the
previously deleted matter as a new insertion.
(2) Claims. Amendments to the claims may only be made as follows:
(i) Instructions for insertions and deletions: A claim may be amended by specifying only the exact matter to
be deleted or inserted by an amendment and the precise point where the deletion or insertion is to be made,
where the changes are limited to:
(A) Deletions and/or
(B) The addition of no more than five (5) words in any one claim; or
(ii) Claim cancellation or rewriting: A claim may be amended by directions to cancel the claim or by rewriting
such claim with underlining below the matter added and brackets around the matter deleted. The rewriting of
a claim in this form will be construed as directing the deletion of the previous version of that claim. If a
previously rewritten claim is again rewritten, underling and bracketing will be applied relative to the previous
version of the claim, with the parenthetical expression “twice amended,” “three times amended,” etc., following
the original claim number. The original claim number followed by the parenthetical expression must be used for
the rewritten claim. No interlineations or deletions of any prior amendment may appearing the currently
submitted version of the claim. A claim canceled by amendment (not deleted and rewritten) can be reinstated
only by a subsequent amendment presenting the claim as a new claim with a new claim number.
(3) Drawings.
(i) Amendments to the original application drawings are not permitted. Any change to the application drawings
must be by way of a substitute sheet of drawings for each sheet changed, submitted in compliance with §1.84.
(ii)Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to
become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(4)[Reserved]
(5) The disclosure must be amended, when required by the Office, to correct inaccuracies of description and
definition, and to secure substantial correspondence between the claims, the remainder of the specification,
and the drawings.
(6) No amendment may introduce new matter into the disclosure of an application.
(b) Amendments in reissue applications: Amendments in reissue applications are made by filing a paper, in
compliance with §1.52, directing that specified amendments be made.
(1) Specification other than the claims. Amendments to the specification, other than to the claims, may only be
made as follows:
(i) Amendments must be made by submission of the entire text of a newly added or rewritten paragraph(s)
with markings pursuant to paragraph (b)(1)(iii) of this section, except that an entire paragraph may be deleted
by a statement deleting the paragraph without presentation of the text of the paragraph.
(ii)The precise point in the specification must be indicated where the paragraph to be amended is located.
(iii)Underlining below the subject matter added to the patent and brackets around the subject matter deleted
from the patent are to be used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in accordance with paragraph (b)(6) of this
section and must include the entire text of each claim which is being amended by the current amendment and
of each claim being added by the current amendment, with markings pursuant to paragraph (b)(2)(I)(C) of this
section, except that a patent claim or added claim should be canceled by a statement canceling the patent
claim or added claim without presentation of the text of the patent claim or added claim.

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(B) Patent claims must not be renumbered and the numbering of any claims added to the patent must follow
the number of the highest numbered patent claim.
( c) Underling below the subject matter added to the patent and brackets around the subject matter deleted
from the patent are to be used to mark the amendments being made. If a claim is amended pursuant to
paragraph (b)(2)(I)(A) of this section, a parenthetical expression “amended”, “twice amended”, etc., should
follow the original claim number.
(ii) Each amendment submission must set forth the status (i.e., pending or canceled) as of the date of the
amendment, of all patent claims and of all added claims.
(iii) Each amendment when originally submitted must be accompanied by an explanation of the support in the
disclosure of the patent for the amendment along with any additional comments on page(s) separate from the
page(s) containing the amendment.
(3) Drawings.
(i) Amendments to the original patent drawings are not permitted. Any change to the patent drawings must be
by way of a new sheet of drawings with the amended figures identified as “amended” and with added figures
identified as “new” for each sheet changed submitted in compliance with §1.84.
(ii)Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to
become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(4) The disclosure must be amended, when required by the Office, to correct inaccuracies of description and
definition, and to secure substantial correspondence between the claims, the remainder of the specification,
and the drawings.
(5) No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied
for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251. No amendment to the
patent may introduce new matter or be made in an expired patent.
(6) All amendments must be made relative to the patent specification, including the claims, and drawings,
which is in effect as of the date of filing of the reissue application.
© Amendments in reexamination proceedings: Any proposed amendment to the description and claims in
patents involved in reexamination proceedings must be made in accordance with §1.530(d).
Other Rules That Apply To Design Patent Applications

37 CFR 1.63 Oath or declaration.

(a) An oath or declaration filed under §1.51(b)(2) as a part of an application must:
(1) Be Executed in accordance with either §1.66 or §1.68;
(2) Identify the specification to which it is directed;
(3) Identify each inventor by: full name, including the family name, and at least one given name without
abbreviation together with any other given name or initial, and the residence, post office address and country
of citizenship of each inventor; and
(4) State whether the inventor is a sole or joint inventor of the invention claimed.
(b) In addition to meeting the requirements of paragraph (a), the oath or declaration must state that the
person making the oath or declaration:
(1) Has reviewed and understands the contents of the specification, including the claims, as amended by any
amendment specifically referred to in the oath or declaration;
(2) Believes the named inventor or inventors to be the original and first inventor or inventors of the subject
matter which is claimed and for which a patent is sought; and
(3) Acknowledges the duty to disclose to the Office all information known to the person to be material to
patentability as defined in §1.56.
(c) In addition to meeting the requirements of paragraphs (a) and (b) of this section, the oath or declaration in
any application in which a claim for foreign priority is made pursuant to §1.55 must identify the foreign
application for patent or inventor’s certificate on which priority is claimed and any foreign application having a

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filing date before that of the application on which priority is claimed, by specifying the application number,
country, day, month, and year of its filing.
(d) (1) A newly executed oath or declaration is not required under §1.51 (b)(2) and §1.53(f) in a continuation or
divisional application, provided that:
(I)The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a)
through (c) of this section;
(ii)The continuation or divisional application was filed by all or by fewer than all of the inventors named in the
prior application;
(iii) The specification and drawings filed in the continuation or divisional application contain no matter that
would have been new matter in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an
indication thereon that it was signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or
divisional application must be accompanied by a statement requesting the deletion of the name or names of the
person or persons who are not inventors in the continuation or divisional application.
(3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional
application was originally filed in a prior application accorded status under §1.47, the copy of the executed
oath or declaration for such prior application must be accompanied by:
(I) A copy of the decision granting a petition to accord §1.47 status to the prior application, unless all
inventors or legal representatives have filed an oath or declaration to join in an application accorded status
under §1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120,121, or
365©; and
(ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could
not be found or reached has subsequently joined in the prior application or another application of which the
continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365©, a copy of the
subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the
application.
(4) Where the power of attorney (or authorization of agent) or correspondence address was changed during
the prosecution of the prior application, the change in power of attorney (or authorization of agent) or
correspondence address must be identified in the continuation or divisional application. Otherwise, the Office
may not recognize in the continuation or divisional application the change of power of attorney (or
authorization of agent) or correspondence address during the prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an
inventor not named in the prior application.
(e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application
may name all, more, or fewer than all of the inventors named in the prior application. The oath or declaration in
any continuation-in-part application must also state that the person making the oath or declaration
acknowledges the duty to disclose to the Office all information known to the person to be material to
patentability as defined in §1.56, which became available between the filing date of the prior application and
the national or PCT international filing date of the continuation-in-part application.

37 CFR 1.3 Business to be conducted with decorum and courtesy.

Applicants and their attorneys or agents are required to conduct their business with the Patent and
Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be
submitted to the Commissioner and will be returned by the Commissioner’s direct order. Complaints against
examiners and other employees must be made in correspondence separate from other papers.

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37 CFR 1.153 Title, description and claim, oath or declaration.

(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.

3.23 Sample Specification

To the Commissioner of Patents and Trademarks:

Your petitioner, (Name)_______________ a citizen of (Country)__________ and a resident of (City,

State)__________, prays that letters patent may be granted for the design for a
(Title)_______________as set forth in the following specification:
FIG. 1 is a ___________view of a __________showing my new design;
FIG. 2 is a ___________view thereof;
FIG. 3 is a ___________view thereof;
FIG. 4 is a ___________view thereof;
FIG. 5 is a ___________view thereof; and
FIG. 6 is a ___________view thereof.

I claim: the ornamental design for a __________as shown.

*Applicants are referred to the Disclosure Examples on Pages 9-13, to determine the proper wording and
number of Figure Descriptions appropriate to their disclosure. Individual inventors should also complete a
Statement Claiming Small Entity Status (FORM PTOS/SB/09), as well as a Declaration. Questions regarding
an application and its forms may be directed to the Patent Assistance Center at +1-800-786-9199.

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