Rules That Apply to Design Patent Applications
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37 CFR 1.3 US Patent Office 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.
37 CFR 1.63 Oath or declaration
(a) An oath or declaration filed
under § 1.51(b)(2), as a part of a nonprovisional patent application
(1) Be executed, i.e., signed, in
accordance with either § 1.66 or § 1.68. There is no minimum
age for a person to be qualified to sign, but the person must be competent
to sign, i.e., understand the document that the person is signing;
(2) 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;
(3) Identify the country of citizenship
of each inventor;
(4) State that the person making
the oath or declaration 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.
(b) In addition to meeting the requirements
of paragraph (a) of this section, the oath or declaration must also:
(1) Identify the application to which
it is directed;
(2) State that the person making
the oath or declaration has reviewed and understands the contents of the
application, including the claims, as amended by any amendment specifically
referred to in the oath or declaration;
(3) 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.
(c) Unless such information is supplied
on an application data sheet in accordance with § 1.76, the oath,
or declaration must also identify:
(1) The mailing address, and the
residence if an inventor lives at a location which is different from where
the inventor customarily receives mail, of each inventor;
(2) Any foreign application for patent
(or inventor's certificate) for which a claim for priority is made pursuant
to § 1.55, and any foreign application having a 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;
(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(c);
(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(c), 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
37 CFR 1.76 Application data sheet
(a) Application data sheet. An application
data sheet is a sheet or sheets that may be voluntarily submitted in either
provisional or nonprovisional applications, which contains bibliographic
data, arranged in a format specified by the Office. If an application data
sheet is provided, the application data sheet is part of the provisional
or nonprovisional application for which it has been submitted.
(b) Bibliographic data. Bibliographic
data as used in paragraph (a) of this section includes:
(1) Applicant information. This information
includes the name, residence, mailing address, and citizenship of each
applicant (§ 1.41(b)). The name of each applicant must include the
family name, and at least one given name without abbreviation together
with any other given name or initial. If the applicant is not an inventor,
this information also includes the applicant' s authority (§§
1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor.
(2) Correspondence information. This
informa-tion includes the correspondence address, which may be indicated
by reference to a customer number, to which correspondence is to be directed
(see § 1.33(a)).
(3) Application information. This
information includes the title of the invention, a suggested classification,
by class and subclass, the Technology Center to which the subject matter
of the invention is assigned, the total number of drawing sheets, a suggested
drawing figure for publication (in a nonprovisional application), any docket
number assigned to the application, the type of application (e.g., utility,
plant, design, reissue, provisional), whether the application discloses
any significant part of the subject matter of an application under a secrecy
order pursuant to § 5.2 of this chapter (see § 5.2(c)), and,
for plant applications, the Latin name of the genus and species of the
plant claimed, as well as the variety denomination. The suggested classification
and Technology Center information should be supplied for provisional applications
whether or not claims are present. If claims are not present in a provisional
application, the suggested classification and Technology Center should
be based upon the disclosure.
(4) Representative information. This
information includes the registration number of each practitioner having
a power of attorney or authorization of agent in the application (preferably
by reference to a customer number). Providing this information in the application
data sheet does not constitute a power of attorney or authorization of
agent in the application (see § 1.34(b)).
(5) Domestic priority information.
This information includes the application number, the filing date, the
status (including patent number if available), and relationship of each
application for which a benefit is claimed under 35 U.S.C. 119(e), 120,
121, or 365(c). Providing this information in the application data sheet
constitutes the specific reference required by 35 U.S.C. 119(e) or 120,
and § 1.78(a)(2) or § 1.78(a)(4), and need not otherwise be made
part of the specification.
(6) Foreign priority information.
This information includes the application number, country, and filing date
each foreign application for which priority is claimed, as well as any
foreign application having a filing date before that of the application
for which priority is claimed. Providing this information in the application
data sheet constitutes the claim for priority as required by 35 U.S.C.
119(b) and § 1.55(a).
(7) Assignee information. This information
includes the name (either person or juristic entity) and address of the
assignee of the entire right, title, and interest in an application. Providing
this information in the application data sheet does not substitute for
compliance with any requirement of part 3 of this chapter to have an assignment
recorded by the Office.
(c) Supplemental application data
sheets. Supplemental application data sheets:
(1) May be subsequently supplied
prior to payment of the issue fee either to correct or update information
in a previously submitted application data sheet, or an oath or declaration
under § 1.63 or § 1.67, except that inventorship changes are
governed by § 1.48, correspondence changes are governed by §
1.33(a), and citizenship changes are governed by § 1.63 or §
(2) Should identify the information
that is being changed (added, deleted, or modified) and therefore need
not contain all the previously submitted information that has not changed.
(d) Inconsistencies between application
data sheet and oath or declaration. For inconsistencies between information
that is supplied by both an application data sheet under this section and
by an oath or declaration under §§ 1.63 and 1.67:
(1) The latest submitted information
will govern notwithstanding whether supplied by an application data sheet,
or by a § 1.63 or § 1.67 oath or declaration, except as provided
by paragraph (d)(3) of this section;
(2) The information in the application
data sheet will govern when the inconsistent information is supplied at
the same time by a § 1.63 or § 1.67 oath or declaration, except
as provided by paragraph (d)(3) of this section;
(3) The oath or declaration under
§ 1.63 or § 1.67 governs inconsistencies with the application
data sheet in the naming of inventors (§ 1.41(a)(1)) and setting forth
their citizenship (35 U.S.C. 115);
(4) The Office will initially capture
bibliographic information from the application data sheet (notwithstanding
whether an oath or declaration governs the information). Thus, the Office
shall generally not look to an oath or declaration under § 1.63 to
see if the bibliographic information contained therein is consistent with
the bibliographic information captured from an application data sheet (whether
the oath or declaration is submitted prior to or subsequent to the application
data sheet). Captured bibliographic information derived from an application
data sheet containing errors may be recaptured by a request therefor and
the submission of a supplemental application data sheet, an oath or declaration
under § 1.63 or § 1.67, or a letter pursuant to § 1.33(b).
37 CFR 1.84
for patent drawings
Note: The drawing standards for
design patents are the same as for other patents. Rather than repeat the
same information we are redirecting you to the same information listed
under utility patents. Do not get confused when references are made to
utility patents. The official
rules on margins, paper types etc. are all the same and relevant to
all patent drawings regardless of type.
(y) Types of drawings. See §
1.152 for design drawings, § 1.165 for plant
drawings, and § 1.174 for reissue drawings.
37 CFR 1.121 Manner of making
amendments in application.
(a) Amendments in applications, other
than reissue applications. Amendments in applications, other than reissue
applications, are made by filing a paper, in compliance with § 1.52,
directing that specified amendments be made.
(b) Specification other than the
claims and listings provided for elsewhere (§§ 1.96 and 1.825).
(1) Amendment by instruction to delete,
replace, or add a paragraph. Amendments to the specification, other than
the claims and listings provided for elsewhere (§§ 1.96 and 1.825),
may be made by submitting:
(i) An instruction, which unambiguously
identifies the location, to delete one or more paragraphs of the specification,
replace a deleted paragraph with one or more replacement paragraphs, or
add one or more paragraphs;
(ii) Any replacement or added paragraph(s)
in clean form, that is, without markings to indicate the changes that have
(iii) Another version of any replacement
paragraph(s), on one or more pages separate from the amendment, marked
up to show all the changes relative to the previous version of the paragraph(s).
The changes may be shown by brackets (for deleted matter) or underlining
(for added matter), or by any equivalent marking system. A marked up version
does not have to be supplied for an added paragraph or a deleted paragraph
as it is sufficient to state that a particular paragraph has been added,
(2) Amendment by replacement section.
If the sections of the specification contain section headings as provided
in §§ 1.77(b), 1.154(b), or § 1.163(c), amendments to the
specification, other than the claims, may be made by submitting:
(i) A reference to the section heading
along with an instruction to delete that section of the specification and
to replace such deleted section with a replacement section;
(ii) A replacement section in clean
form, that is, without markings to indicate the changes that have been
(iii) Another version of the replacement
section, on one or more pages separate from the amendment, marked up to
show all changes relative to the previous version of the section. The changes
may be shown by brackets (for deleted matter) or underlining (for added
matter), or by any equivalent marking system.
(3) Amendment by substitute specification.
The specification, other than the claims, may also be amended by submitting:
(i) An instruction to replace the
(ii) A substitute specification in
compliance with § 1.125(b);
(iii) Another version of the substitute
specification, separate from the substitute specification, marked up to
show all changes relative to the previous version of the specification.
The changes may be shown by brackets (for deleted matter), or underlining
(for added matter), or by any equivalent marking system.
(4) Reinstatement: Deleted matter
may be reinstated only by a subsequent amendment presenting the previously
(1) Amendment by rewriting, directions
to cancel or add: Amendments to a claim must be made by rewriting such
claim with all changes (e.g., additions, deletions, modifications) included.
The rewriting of a claim (with the same number) will be construed as directing
the cancellation of the previous version of that claim. A claim may also
be canceled by an instruction.
(i) A rewritten or newly added claim
must be in clean form, that is, without markings to indicate the changes
that have been made. A parenthetical expression should follow the claim
number indicating the status of the claim as amended or newly added (e.g.,
“amended”, “twice amended,” or “new”).
(ii) If a claim is amended by rewriting
such claim with the same number, the amendment must be accompanied by another
version of the rewritten claim, on one or more pages separate from the
amendment, marked up to show all the changes relative to the previous version
of that claim. A parenthetical expression should follow the claim number
indicating the status of the claim, e.g., “amended”, “twice amended”, etc.
The parenthetical expression “amended”, “twice amended”, etc. should be
the same for both the clean version of the claim under paragraph (c)(1)(i)
of this section and the marked up version under this paragraph. The changes
may be shown by brackets (for deleted matter) or underlining (for added
matter), or by any equivalent marking system. A marked up version does
not have to be supplied for an added claim or a canceled claim as it is
sufficient to state that a particular claim has been added, or canceled.
(2) A claim canceled by amendment
(deleted in its entirety) may be reinstated only by a subsequent amendment
presenting the claim as a new claim with a new claim number.
(3) A clean version of the entire
set of pending claims may be submitted in a single amendment paper. Such
a submission shall be construed as directing the cancellation of all previous
versions of any pending claims. A marked up version is required only for
claims being changed by the current amendment (see paragraph (c)(1)(ii)
of this section). Any claim not accompanied by a marked up version will
constitute an assertion that it has not been changed relative to the immediate
(d) Drawings. Application drawings
are amended in the following manner: Any change to the application drawings
must be submitted on a separate paper showing the proposed changes in red
for approval by the examiner. Upon approval by the examiner, new drawings
in compliance with § 1.84 including the changes must be filed.
(e) Disclosure consistency. 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.
(f) No new matter. No amendment may
introduce new matter into the disclosure of an application.
(g) Exception for examiner's amendments:
Changes to the specification, including the claims, of an application made
by the Office in an examiner's amendment may be made by specific instructions
to insert or delete subject matter set forth in the examiner's amendment
by identifying the precise point in the specification or the claim(s) where
the insertion or deletion is to be made. Compliance with paragraphs (b)(1),
(b)(2) or (c)(1) of this section is not required.
(h) Amendments in reissue applications.
Any amendment to the description and claims in reissue applications must
be made in accordance with § 1.173.
(i) Amendments in reexamination proceedings:
Any proposed amendment to the description and claims in patents involved
in reexamination proceedings in both ex parte reexaminations filed under
§ 1.510 and inter partes reexaminations filed under § 1.913 must
be made in accordance with § 1.530(d)-(j).
(j) Amendments in provisional applications:
Amendments in provisional applications are not normally made. If an amendment
is made to a provisional application, however, it must comply with the
provisions of this section. Any amendments to a provisional application
shall be placed in the provisional application file but may not be entered.
37 CFR 1.152 Design drawings
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. Appropriate and adequate surface
shading should be used to show the character or contour of the surfaces
represented. Solid black surface shading is not permitted except when used
to represent the color black as well as color contrast. Broken lines may
be used to show visible environmental structure, but may not be used to
show hidden planes and surfaces that cannot be seen through opaque materials.
Alternate positions of a design component, illustrated by full and broken
lines in the same view are not permitted in a design drawing. Photographs
and ink drawings are not permitted to be combined as formal drawings in
one application. Photographs submitted in lieu of ink drawings in design
patent applications must not disclose environmental structure but must
be limited to the design claimed for the article.
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.
37 CFR 1.154 Arrangement of application
elements in a design application
(a) The elements of the design application,
if applicable, should appear in the following order:
(1) Design application transmittal
(2) Fee transmittal form.
(3) Application data sheet (see §
(5) Drawings or photographs.
(6) Executed oath or declaration
(see § 1.153(b)).
(b) The specification should include
the following sections in order:
(1) Preamble, stating the 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) Cross-reference to related applications
(unless included in the application data sheet).
(3) Statement regarding federally
sponsored research or development.
(4) Description of the figure or
figures of the drawing.
(5) Feature description.
(6) A single claim.
(c) The text of the specification
sections defined in paragraph (b) of this section, if applicable, should
be preceded by a section heading in uppercase letters without underlining
or bold type.
37 CFR 1.155 Expedited examination
of design applications
(a) The applicant may request that
the Office expedite the examination of a design application. To qualify
for expedited examination:
(1) The application must include
drawings in compliance with § 1.84;
(2) The applicant must have conducted
a pre-examination search; and
(3) The applicant must file a request
for expedited examination including:
(i) The fee set forth in § 1.17(k);
(ii) A statement that a pre-examination
search was conducted. The statement must also indicate the field of search
and include an information disclosure statement in compliance with §
(b) The Office will not examine an
application that is not in condition for examination (e.g., missing basic
filing fee) even if the applicant files a request for expedited examination
under this section.
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