At Design Day 2013, USPTO Design Practice Specialist Joel Sincavage delivered a nine-page PowerPoint presentation that changed how design patent applications would be examined. The first page depicted an old-time baseball player hitting a baseball through a design patent. The next eight pages changed how design patent applications would be examined.
Joel Sincavage announced that the USPTO would no longer be using the outdated standard of MPEP 1504.04 to determine whether converting solid lines to broken lines was new matter. Instead, the USPTO will use the new standard of MPEP 1504.04 in determining whether converting solid lines to broken lines is new matter. Please re-read the previous two sentences. We were initially confused, too!
The USPTO had previously held that “either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration.” (MPEP 1504.04) The USPTO now asserts that “[t]he scope of a design claim is defined by what is shown in full lines in the application drawings,” (MPEP 1504.04) and that a conversion between broken lines and solid lines would be rejected as new matter unless supported in the application.
What’s the problem with this ruling? Many design patent applications do not have a description that could support such an amendment between solid lines and broken lines. In fact, the USPTO specifically notes that a disclaimer statement directed to any portion of the claimed design that is shown in solid lines in the drawings is “not permitted in the specification of an issued design patent.” (MPEP 1503.01) A lot of times, it is hard to make sense of the changing USPTO rules, but here at Brooks Acordia, we’ve already begun implementing strategies to address this change from MPEP 1504.04 to MPEP 1504.04. If you’d like more information on your options, please do not hesitate to contact us.Share