[Patentpractice] Appendix in a Design Patent

[Jim Larsen]

For years I have, when available/warranted, included an appendix at initial filing of a design patent.  The appendix can include photos, CAD, additional views, and/or etc. that can be useful when a clarifying amendment to the drawings is required.  For the first time (for me), a (primary) examiner indicates that such appendix must be explicitly incorporated by reference at time of initial filing in order to be considered, pointing to MPEP 2163.07(b).  Is the examiner right?

My review of that section does not clearly confirm the examiner’s position.  Of the 174 design patents I could identify (Google Patents search) that include the term “Appendix” (I’m confident there are many more that included an appendix but do not mention it in the specification), very few (i.e., single digits) appear to explicitly incorporate that appendix by reference.  For example, some mention an attached appendix without incorporating.  Naturally, the MPEP does not specifically discuss appendices to design patents.  Indeed, the only USPTO mention I’ve found is in a USPTO Inventor Info Webinar in 2017<https://rev-vbrick.uspto.gov/#/videos/93a61b35-2d17-4d45-a6ae-09e3821ed641>, where the presenters appear to indicate that an appendix is NOT part of the specification (suggesting incorporation by reference is not required).

(at 35:17)
Q: Can you provide an appendix in y our design application which includes photos or 3D drawings that may be used and how those would be tied into the design?

A: Yes, you can absolutely include an appendix.  These days we actually like an appendix in the application. You can put as much information about your design in that appendix.  It’s really helpful to the examiner.  It’s also helpful to you if you ever want to make an amendment in the application and maybe the actual drawing disclosure you submitted didn’t provide enough information, that you would run into a new matter issue. Your appendix could very well have so much information in it that you actually have that info to overcome  any kind of new matter issue.  That’s actually one example of how it would be used in a design application.  But keep in mind the appendix is separate from the rest of the application in the sense that the appendix is … you’re not gonna get any protection in your patent from the appendix.  The appendix is just a separate document that isn’t part of the formal disclosure (the specification and drawings).  It’s just separate there.  It’s just a good way of being able to overcome new matter issues.

The appendix stays in the file, so it’s in the application file which may help you in other circumstances.  Again, we don’t do litigation, but in theory those things could help you in court.  The use of an appendix in a design application—as well as helping the examiner understand what you’re attempting to claim, what you’re claiming—it also allows you to add, to that claim, inadvertently omitted information. … It doesn’t let you add a whole different piece to a design.  If you have an application for a camera and your application for a camera does not have the lens on it (it’s a removable lens), and nothing in that application shows the lens, and  your examiner gives you a rejection because that camera body is exactly the same as other camera bodies or is a very obvious variation on other camera bodies,  you … will not be able to bring the lens into that application to overcome that rejection because that’s too much.  It’s not inadvertently omitted material. It was material that you chose initially not to claim. Now you want to claim it to overcome a 112.  You can’t do that.  However, let’s say that you have the same camera body and you show in one view an aperture for a light meter, let’s say.  And in the other views you don’t show it.  You might be able to overcome a rejection for the drawings being inconsistent by saying, “oh, but it is in the appendix. You can see that this feature is there and it’s in all the drawings and was inadvertently omitted from all the figures except one of the figures.  That’s basically the purpose of the appendix.”

So, no mention in the MPEP or in the webinar of a requirement to incorporate by reference.

Best regards,

-Jim

James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.Larsen-IP.com>

NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240424/175c1d69/attachment.html>