Applying the Written Description Requirement to Design Applications: USPTO Tries Again

On Friday April 15, the USPTO published a Federal Register notice (81 Fed. Reg. 22233 (Apr. 15, 2016)) seeking comments on new guidelines for the application of the written description requirement to design patent applications.

In February 2014, the USPTO released an earlier set of draft guidelines for applying the written description requirement to design patent applications that focused on a set of “factors” used to determine if an amended claim, or a claim in a continuation design application that includes only a subset of originally disclosed elements, met the written description requirements under 35 U.S.C. § 112. After conducting a public Roundtable discussion with the design patent bar and receiving public comments, the USPTO decided to rethink this approach.

The new guidelines focus on Federal Circuit precedent, specifically Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), and other design patent specific case law, including Racing Strollers Inc., v. TRI Industries, Inc., 878 F.2d 1418 (Fed. Cir. 1989), In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998), and In re Owens, 710 F.3d 1362 (Fed. Cir. 2013). In applying the newly-formulated guidelines, the USPTO proposes that the examiner would consider all parts of the originally-filed application (for amendments) or parent application (for continuations), including the title, any descriptive statements, the drawings, and the nature and intended use of the article embodying the claimed design, before making an initial rejection on lack of written description. Upon reply by the applicant and before making a final rejection, the examiner would consider any amendments, as well as any affidavits or declarations from the applicant. However, the guidelines do not specify the criteria by which such an affidavit or declaration would be considered beyond citing to Federal Circuit precedent holding that conclusory statements about whether a person skilled in the art reading the original application would recognize that the inventor was in possession of the invention are not sufficient. See In re Alton, 76 F.3d 1168, 1176 (Fed. Cir. 1996).

The USPTO is requesting comments on this proposed approach, along with specific examples from the public that demonstrate adequate written description and examples that demonstrate a lack of written description. Comments are due to the USPTO by June 14, 2016. The AIPLA and IPO committees on design rights are studying the guidelines and plan to provide comments to the USPTO, if appropriate.