Request for Comments and Notice of Roundtable Event on the Written Description Requirement for Design Applications, 7171-7173 [2014-02578]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 79, Number 25 (Thursday, February 6, 2014)]
[Notices]
[Pages 7171-7173]
From the Federal Register Online via the Government Printing 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 DesignRoundtable2014@uspto.gov. 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 
https://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 
DesignRoundtable2014@uspto.gov 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

[[Page 7172]]

copies of their presentations in Microsoft PowerPoint or Microsoft Word 
to DesignRoundtable2014@uspto.gov 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 https://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 robert.olszewski@uspto.gov. 
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 
nicole.haines@uspto.gov.

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 https://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 https://

[[Page 7173]]

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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