[Federal Register Volume 79, Number 25 (Thursday, February 6, 2014)]
[Notices]
[Pages 7171-7173]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-02578]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2014-0002]
Request for Comments and Notice of Roundtable Event on the
Written Description Requirement for Design Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of public meeting; request for comments.
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SUMMARY: The United States Patent and Trademark Office (Office) is
hosting a roundtable event to solicit public opinions regarding the
written description requirement as applied to design applications in
certain limited situations. Members of the public are invited to
participate. The roundtable will provide a forum for an informal
discussion of the topics identified in this notice. Written comments in
response to these topics also are requested.
DATES: Event: The roundtable event will be held on March 5, 2014,
beginning at 1:00 p.m. Eastern Daylight Time (EDT), and ending at 4:00
p.m. EDT.
Comments: Written comments must be received on or before March 14,
2014 to ensure consideration.
Registration: Registration is required to attend the roundtable in
person or via Web cast. Additionally, members of the public who wish to
participate in the roundtable as a speaker must do so by request in
writing no later than February 14, 2014. See the ``Registration
Information'' section of this notice for additional details on how to
register.
ADDRESSES: Event: The roundtable event will be held in the Madison
Auditorium on the concourse level of the Madison Building, which is
located at 600 Dulany Street, Alexandria, Virginia 22314.
Comments: Any member of the public, whether attending the
roundtable or not, may submit written comments on any of the topics
identified in section III, below, for consideration by the Office.
Persons submitting written comments should note that the Office will
not provide a response because this notice is not a notice of proposed
rulemaking. Written comments should be sent by electronic mail
addressed to [email protected]. Comments also may be
submitted by mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Nicole Dretar Haines. Although comments may
be submitted by mail, the Office prefers to receive comments via the
Internet. To ensure consideration, written comments must be received on
or before March 14, 2014.
Comments will be available via the Office's Internet Web site at
http://www.uspto.gov/patents/init_events/index.jsp, and will be
available for public inspection at the Office of the Commissioner for
Patents, located in Madison East, Tenth Floor, 600 Dulany Street,
Alexandria, Virginia 22314, upon request. Because comments will be
available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included
in the comments.
Event Registration Information: There is no fee to register for the
roundtable, and registration will be on a first-come, first-served
basis. Additionally, members of the public who wish to participate in
the roundtable as a speaker must do so by request in writing no later
than February 14, 2014. Registration on the day of the roundtable will
be permitted for members of the public who wish solely to observe on a
space-available basis beginning 30 minutes before the roundtable.
To register, please send an email message to
[email protected] and provide the following information:
(1) Your name, title, and if applicable, company or organization,
address, phone number, and email address; (2) whether you wish to
attend in person or via Web cast; and (3) if you wish to make an oral
presentation at the roundtable, which of the topics identified in
section III, below, will be addressed and the approximate desired
length of your presentation. Each attendee, even if from the same
organization, must register separately.
Due to time constraints, there is the potential that not all
persons who wish to make a presentation will be accommodated. However,
the Office will attempt to accommodate all persons who wish to make a
presentation at the roundtable event. After reviewing the list of
speakers and the information regarding the presentations provided in
the registration, the Office will contact each speaker prior to the
event with the amount of time available and the approximate time that
the speaker's presentation is scheduled to begin. The amount of time
available for each presentation will be limited to ensure that all
persons selected to speak will have a meaningful chance to do so.
Speakers must send the final electronic
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copies of their presentations in Microsoft PowerPoint or Microsoft Word
to [email protected] by February 26, 2014, so that the
presentation can be displayed at the roundtable. If time permits, the
Office will provide an opportunity for persons in the audience not
previously selected as speakers to speak at the roundtable without a
formal presentation.
The Office plans to make the roundtable event available via Web
cast. Web cast information will be available on the Office's Internet
Web site before the roundtable event at http://www.uspto.gov/patents/init_events/index.jsp.
If special accommodations due to a disability are needed, please
inform the contact person(s) identified below.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
regarding registration and speaker presentations should be directed to
the attention of Robert Olszewski, Director, Technology Center 2900, by
telephone at 571-272-2200, or by email to [email protected].
Requests for additional information regarding the topics for written
comments and discussion at the roundtable event should be directed to
Nicole Dretar Haines, Senior Legal Advisor, Office of Patent Legal
Administration, by telephone at 571-272-7717, or by email to
[email protected].
SUPPLEMENTARY INFORMATION:
I. Purpose of Notice: This notice is directed to announcing a
roundtable event to solicit public opinions concerning the topics
identified in section III, below, relating to the written description
requirement under 35 U.S.C. 112(a) (or for applications filed prior to
September 16, 2012, 35 U.S.C. 112, first paragraph) (hereinafter
collectively referred to as ``35 U.S.C. 112(a)'') as applied to design
applications. The topics selected for comment and discussion have been
chosen based on input the Office received following the Seventh Annual
Office Design Patent Conference ``Design Day 2013: Designs in the New
Digital Age'' (Design Day) held on April 23, 2013. The public is
invited to provide comments on these topics and to identify future
topics for discussion.
II. Background: A question as to whether an originally disclosed
design provides an adequate written description may arise where a new
or amended claim is presented, or where a claim to entitlement of an
earlier priority date or effective filing date (e.g., under 35 U.S.C.
120) has been made. During discussions between the Office and members
of the public attending Design Day, some attendees requested that the
Office reconsider how the written description requirement under 35
U.S.C. 112(a) is applied to design applications where only a subset of
elements of the original disclosure are shown using solid lines in an
amendment or continuation application. In order to obtain a better
understanding of the attendees' concerns, the Office is hosting this
roundtable event.
III. Topics for Written Comments and Discussion at the Roundtable
Event: The Office seeks comments on the application of the written
description requirement where only a subset of elements of the original
disclosure are shown using solid lines in an amendment or in a
continuation application.\1\ Specifically, the Office seeks input on
the following topics relating to the written description requirement
under 35 U.S.C. 112(a) as applied to design applications in certain
limited situations.
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\1\ The Office is not seeking comments on the issue of the
introduction of boundary lines via amendment or in a continuation
application, as addressed in In re Owens, 710 F.3d 1362 (Fed. Cir.
2013).
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A. Factors in Determining Whether an Amended/Continuation Design Claim
Satisfies the Written Description Requirement
It has been the experience of the Office that in the majority of
cases there is no question that the amended/continuation design claim
satisfies the written description requirement. However, in some rare
situations, it has been the experience of the Office that a question
may arise as to whether the applicant had possession of the newly
claimed design at the time of filing the original application, where
the design results from the applicant including only a subset of
seemingly unrelated, originally disclosed elements in the claim by way
of an amendment or continuation application.
At Design Day, during the Office's presentation titled ``More About
Written Description Requirement of 35 U.S.C. 112(a)'' (available on the
Office's Internet Web site at http://www.uspto.gov/patents/init_events/index.jsp), specific examples illustrating an original design
claim and an amended design claim were discussed where, in the amended
claim, only a subset of seemingly unrelated elements of the original
disclosure were shown using solid lines. Some members of the public
attending Design Day raised concerns regarding the Office's position
that the inventor may not have had possession of the newly claimed
design in some of these examples. See, e.g., the Office's presentation
titled ``More About Written Description Requirement of 35 U.S.C.
112(a)'' at slide 8. These attendees took the position, relying on
Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 1420 (Fed.
Cir. 1989), that as long as the subset of elements forming the newly
claimed design were contained in the originally filed drawings, the
written description requirement of 35 U.S.C. 112(a) is satisfied and no
further analysis is needed.
Accordingly, input is requested as to whether it would be useful
for design examiners to consider any of the following factors in
determining whether an amended/continuation design claim, which
includes only a subset of the originally disclosed elements (no new
elements are introduced that were not originally disclosed), satisfies
the written description requirement. These factors would only be
applied by design examiners in the rare situation where there is a
question as to whether an amended/continuation design claim satisfies
the written description requirement. The factors are as follows:
(1) The presence of a common theme among the subset of elements
forming the newly identified design claim, such as a common appearance;
(2) the subset of elements forming the newly identified design
claim share an operational and/or visual connection due to the nature
of the particular article of manufacture (e.g., set of tail lights of
an automobile);
(3) the subset of elements forming the newly identified design
claim is a self-contained design within the original design;
(4) a fundamental relationship among the subset of elements forming
the newly identified design claim is established by the context in
which the elements appear; and/or
(5) the subset of elements forming the newly identified design
claim gives the same overall impression as the original design claim.
The Office also seeks comments on any additional factors, not
listed above, that would be useful for design patent examiners to
consider in determining whether an amended/continuation design claim,
which includes only a subset of the originally disclosed elements,
satisfies the written description requirement. Further, the Office
seeks comments on the potential advantages and/or disadvantages of
using such a factors-based approach.
Examples that can be used to aid discussion of the factors
identified above will be made available on the Office's Internet Web
site at http://
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www.uspto.gov/patents/init_events/index.jsp prior to the roundtable
event.
B. Establishing Adequate Written Description Support in the Original
Disclosure
Additionally, the Office seeks comments on whether there are
mechanisms applicants can use to demonstrate that they had possession
of designs claimed in future amendments/continuation applications at
the time their original applications were filed. For instance, the
Office seeks comments on whether use of a descriptive statement in the
originally-filed application (e.g., that specifically identifies
different combinations of elements which respectively form additional
designs) could be a meaningful way for applicants to demonstrate that
they had possession of designs claimed in future amendments/
continuation applications. The Office's initial impression is that
generic boilerplate statements would not adequately reflect what the
designer had in his or her possession at the time of filing the
application.
Dated: January 31, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-02578 Filed 2-5-14; 8:45 am]
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