[Patentpractice] appendix in design patent - requirements and formalities

[Jim Larsen]

Dear listmates,

Does anyone have, or know of, an official document or guideline regarding use of an appendix in a design patent?  I've found a single USPTO mention of a design patent appendix, in the Q&A portion of a USPTO webinar in 2017<https://rev-vbrick.uspto.gov/#/videos/93a61b35-2d17-4d45-a6ae-09e3821ed641> (a favorable mention, it may be noted).

As mentioned in the webinar, an appendix can support, for example, an amendment adding a feature missing from a view, among other benefits.   An examiner asserts (with reference to MPEP 2163.07(b)) that an appendix must be explicitly incorporated by reference in order to support an amendment.  My quick research suggests, that of nearly 200 published design patents that mention an appendix, only a handful include language explicitly incorporating the appendix by reference.  However, the cited MPEP section references the need to incorporate by reference "information contained in another document".   Is an appendix "another document"?  Presumably, under the examiner's interpretation, if any of those patents relied for an amendment on an appendix not explicitly incorporated, they could be invalidated, so this potentially could be a big deal.


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/>

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240513/c6aad593/attachment.html>