Written Description Design Law 2018 Dan Gajewski October 24, 2018

The PTO’s Pivot on Written Description ? ? ? 112 112 112 2013 2014 2015 2016 2017 2018 PTO Announcement at Design Day: Solid lines  broken lines may be new matter PTO holds roundtable on written description requirement PTO again requests comments on written description requirement PTO updates MPEP to include new written description section PTO first requests comments on written description requirement

New MPEP Subsection: 1504.04(I)(C) Considerations Under 35 USC 112 ê 35 USC 112(a) and (b) ê Written Description A change from solid lines to broken lines, or vice versa, is not an introduction of new matter. But it still might not comply with the written description requirement. The Examiner must consider “what design the original/earlier application—in its totality—would have reasonably conveyed to an ordinary designer at the time of the invention.”

New MPEP Subsection: 1504.04(I)(C) Considerations Under 35 USC 112 ê 35 USC 112(a) and (b) ê Written Description The “vast majority” of line-type changes will comply with the WD requirement, but in “limited situations” additional consideration is needed. In practice: Token burden on Examiner Examiner need only identify a difference in line type. Not required to say why the difference makes the claimed design unsupported in the original disclosure. Big burden on Applicant Must positively show compliance with § 112. MPEP envisions “amendments, arguments, and any evidence … such as affidavits or declarations.”

“Limited Situations” 70% Increase § 112 Design Day 2013 Design Day 2013 § 112A / § 112B § 102 / § 103 § 103 § 102 *Examiner actions include office actions and notices of allowance

Comparison with Utility Rejection Counts in TC 2900 (Designs) Rejection Counts in TC 3700 (Mechanical Engineering…) § 103 § 102 § 112B § 112A § 112A / § 112B § 102 / § 103 Design Day 2013

Total Examiners *Modified From TC 2900 Director’s Presentation at Design Day 2018

PTAB Ex Parte Kitade PTAB reverses Examiner WD rejection 2016 2017 2018 Skechers v. Nike PTAB finds WD satisfied David’s Bridal v. Jenny Yoo PTAB finds WD satisfied C&D Zodiac v. B/E Aerospace PTAB finds WD not satisfied

Ex Parte Kitade Appeal 2016-000238; Application No. 29/436125 “Unlike the impermissible drawing modification in In re Owens, Appellant has not introduced any new boundary lines … that delineate a new shape by disclaiming a portion of an existing surface.” “We find no legal basis for the Examiner’s requirement that the originally-filed disclosure direct or guide ‘one to the awareness that the claimed subject matter is of special interest.’” “Appellant’s presently claimed underlying mobile phone design was ‘clearly visible’ in the originally filed disclosure, demonstrating to an artisan viewing the originally filed disclosure that Appellant had possession of the broader claimed article.”

Where does this leave us? MPEP revision reinforces written description practices that came into existence around 2013 By removing nearly all burden from the examiner to support the rejection, the revised MPEP risks encouraging even more of them For a new crop of examiners, this is the only practice they know Even when overcome, unfounded written description rejections needlessly delay patent issuance, are costly, and waste USPTO resources At the expense of searching, §§ 102 and 103 examination, and the examination backlog Look to guidance in recent PTAB decisions for when a written description rejection is appropriate