2920.04(a) Specification [R-07.2022]
37 CFR 1.1067 Title, description, and inventor’s oath or declaration.
- (a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.
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The title of the design identifies the article in which the design is embodied by the name generally known and used by the public. In general, the practice set forth in MPEP § 1503.01 with regard to titles in design applications filed under 35 U.S.C. chapter 16 applies to nonprovisional international design applications. Thus, for example, the title may be directed to the entire article embodying the design while the claimed design, as shown in the reproductions, or as shown and described, may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design.
Pursuant to 35 U.S.C. 154(a)(1), ‘‘[e]very patent shall contain a short title of the invention. . . ’’ In addition, the application’s title of the invention is indicated on the official filing receipt and the bibliographic data sheet contained in the image file wrapper (IFW). The Hague Agreement, however, does not provide for application titles for international design applications. Nevertheless, applicants may provide an application title in a nonprovisional international design application by furnishing the title in an application data sheet in accordance with 37 CFR 1.76 or by amending the specification in accordance with 37 CFR 1.121 to include the application title. In the absence of an application title furnished by the applicant, the Office will establish a title by retrieving the first listed product indication appearing on the published international registration (INID code 54). See 37 CFR 1.1067(a). The title established by the Office will appear on the official filing receipt and/or bibliographic data sheet.
Since 37 CFR 1.1067 requires that the title must designate the particular article, and since the claim must be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described, the title and claim must correspond (i.e., the article named in the title must correspond to the article named in the claim). See 37 CFR 1.1025 and MPEP § 1503.01, subsection I. When the article named in the title furnished by the applicant and the article named in the claim do not correspond, the examiner should object to the inconsistency under 37 CFR 1.1067 and require correction. Form paragraph 29.59.02 may be used if amendment of a title is necessary for consistency with the claim. When the applicant has furnished the title, applicant approval of an examiner’s amendment thereto is required. See MPEP § 1302.04. When the Office has established the title, applicant approval of an examiner’s amendment thereto is not required.
Any amendment to the language of the title should also be made at each occurrence of the language of the title throughout the application, except in the oath or declaration. If the article named in the title is not present in the original figure descriptions, it is not necessary to incorporate the article into the figure descriptions as part of any amendment to the language of the title. Product indications required under Article 5(1)(iv) of the Hague Agreement (see MPEP § 2909) set forth in the specification may differ from the article named in the title and in the claim, as product indications “shall preferably be identified by using terms” appearing in the Locarno classification. See Rule 7(3)(iv). The form paragraphs below may be used in nonprovisional international design applications as appropriate.
¶ 15.05.01 Title of Design Invention
The title of a design must designate the name of the article in which the design is embodied or applied to. In addition, the title must correspond with the claim. See MPEP § 1503.01 and 37 CFR 1.153 or MPEP § 2920.04(a) and 37 CFR 1.1067.
¶ 15.59 Amend Title
For [1], the title, and each occurrence of the language of the title, [2] amended throughout the application, original oath or declaration excepted, to read: [3]
Examiner Note:
- 1. In bracket 1, insert reason.
- 2. In bracket 2, insert –should be– or –has been–.
- 3. When the applicant has furnished the application title, applicant’s authorization is required to make an examiner’s amendment to the application title. See MPEP § 1302.04. Where the changes are made by examiner’s amendment, this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01.
¶ 29.59.01 Amend Title Except for Product Indication
For [1], the title, and each occurrence of the language of the title, [2] amended throughout the application, except for the Design No./Product(s) section and original oath or declaration, to read: [3]
Examiner Note:
- 1. This form paragraph is only to be used in a nonprovisional international design application.
- 2. This form paragraph may be used where the product indication does not correspond to the article named in the title but is identified by terms appearing in the Locarno classification. Where the title, and each occurrence of the language of the title, is to be amended through the entire application, including the product indication (e.g., when the product indication corresponds to the article named in the title), use form paragraph 15.59 instead.
- 3. In bracket 1, insert reason.
- 4. In bracket 2, insert –should be– or –has been–.
- 5. When the applicant has furnished the application title, applicant’s authorization is required to make an examiner’s amendment to the application title. See MPEP §§ 1302.04 and 2920.04(a). Where the changes are made by examiner’s amendment, this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01.
¶ 29.59.02 Amend Application Title to Correspond to the Claim
For consistency with the claim, the title of the application has been amended to read: [1]
Examiner Note:
- 1. This form paragraph is only to be used in a nonprovisional international design application.
- 2. This form paragraph may be used in an Examiner’s Amendment where the application title (the title appearing in the Bib Data Sheet) is being amended to correspond to the claim (i.e., the article named in the application title is being amended to correspond to the article named in the claim).
- 3. When the applicant has furnished the application title, applicant’s authorization is required to make an examiner’s amendment to the application title, and this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01. See MPEP §§ 1302.04 and 2920.04(a). If an extension of time is required, use form paragraph 13.02.02instead of form paragraphs 13.02 and 13.02.01.
- 4. When the Office has established the application title, applicant’s authorization is not required to make an examiner’s amendment to the application title, and this form paragraph should be preceded by form paragraph 13.02.
II. DESCRIPTION
37 CFR 1.1067 Title, description, and inventor’s oath or declaration.
- (a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.
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No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). However, while not required, such a description is not prohibited and may be incorporated into the specification. Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which provides a clear and accurate description of the views.
Applicants are cautioned against using “reference view” as a figure description in international design applications designating the United States. While “reference view” is commonly used in some foreign countries as a figure description, this term does not have any special meaning in U.S practice. Accordingly, the reference view will be treated as another view of the design, and any inconsistencies between the reference view and the other figures of the claimed design may cause uncertainty as to the scope of the claim, resulting in a rejection under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite. A reference view described in the description as not included in the claimed design may result in uncertainty as the scope of the design claimed where the reference view includes features of the claimed design shown in the other views.
In addition to the figure descriptions, statements that are permissible in the specification of a design application filed under 35 U.S.C. chapter 16 are permissible in the specification of a nonprovisional international design application. See MPEP § 1503.01, subsection II for a list of such permissible statements. This includes, for example, statements indicating the nature and environmental use of the claimed design, and statements indicating the purpose of broken lines in the drawing, for example, environmental structure or boundaries that form no part of the design to be patented. In addition, Administrative Instruction 403 permits matter shown in a reproduction for which protection is not sought to be indicated in the description and/or by means of broken or dotted lines or coloring. Accordingly, the specification may include statements explaining that protection is not sought for certain features shown in the reproduction, or that protection is not sought for matter shown in a specified color in the reproduction. When protection is not sought for portions of subject matter shown in a reproduction, applicants are strongly encouraged to indicate such subject matter by means of broken lines (or coloring) and include a statement in the specification explaining the meaning of the broken lines (or coloring). See MPEP § 2920.05(c) .
The specification of a nonprovisional international design application is not permitted to include statements describing matters that are directed to function or are unrelated to the design. In addition, the specification may not include statements that describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure, except one that is a mirror image of that shown or has a shape and appearance that would be evident from the one shown. However, such statements may be included in the design application as originally filed to provide antecedent basis for a future amendment. In addition, statements which attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted.
The form paragraphs set forth in MPEP § 1503.01, subsection II, pertaining to the description may be used in nonprovisional international design applications. In addition, the following form paragraphs may be used to amend the specification by examiner’s amendment to include figure descriptions and/or a description of broken lines or coloring, as appropriate:
¶ 29.60.02 Objection to Specification – Missing Figure Descriptions
The specification is objected to under 37 CFR 1.1067 for failing to provide figure descriptions. The description should indicate the type of view shown in the corresponding figure, such as “front view,” “perspective view,” “top view,” etc.
Examiner Note:
If some, but not all, figure descriptions are missing, the examiner should indicate which descriptions are missing, e.g. “Descriptions for Figures [add numbers of figures without a corresponding description] have not been provided.”
¶ 29.22 Description of Broken Lines Added by Examiner’s Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
–The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design.–
Examiner Note:
- 1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken lines.
- 2. In bracket 1, insert name of structure.
- 3. In bracket 2, insert –portions of the “article”– or –environmental structure–.
- 4. Applicant’s authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01.
¶ 29.24 Description of Broken Lines as Boundary of Design Added by Examiner’s Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
–The [1] broken line(s) define the bounds of the claimed design and form no part thereof.–
Examiner Note:
- 1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken line(s).
- 2. In bracket 1, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
- 3. Applicant’s authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01.
¶ 29.26 Description of Coloring Added by Examiner’s Amendment (International Design Application)
The following sentence has been added to the specification immediately preceding the claim:
–The portion of the design shown in the color [1] is for the purpose of illustrating [2] and forms no part of the claimed design.–
Examiner Note:
- 1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of color used in the reproductions.
- 2. In bracket 1, identify the color indicating the matter excluded from the claim.
- 3. In bracket 2, insert –portions of the “article”– or –environmental structure–.
- 4. Applicant’s authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01.
Where the application contains at least one color drawing or color photograph, the examiner should not require the applicant to amend the specification to add a reference to the color drawing or photograph. Instead, the examiner may amend the specification by Examiner’s Amendment to indicate the presence of the color drawing or photograph using the form paragraph below. The applicant’s authorization is not required.
¶ 29.61.01 At-least-one-color-drawing Statement
The application contains at least one color drawing or color photograph. The specification has been amended to include the following language as the first paragraph of the brief description of the drawings section:
— The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee. —
Examiner Note:
This form paragraph is only for use in an Examiner’s Amendment in international design applications. Authorization for this Examiner’s Amendment is not required.
III. CLAIM
37 CFR 1.1025 The claim.
The specific wording of the claim in an international design application designating the United States shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described. More than one claim is neither required nor permitted for purposes of the United States.
The form and content of a claim in a nonprovisional international design application is set forth in 37 CFR 1.1025.
A design patent application may only include a single claim. The specific wording of the claim must be in formal terms to the ornamental design for the article (the article which embodies the design or to which it is applied) as shown, or as shown and described. The description of the article in the claim should be consistent in terminology with the title of the invention. See MPEP § 2920.04(a), subsection I.
When the specification includes a proper descriptive statement of the design (see MPEP § 2920.04(a), subsection II), or a proper showing of modified forms of the design or other descriptive matter has been included in the specification, the words “and described” must be added to the claim following the term “shown”; i.e., the claim must read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.” Unless the claim was amended by the applicant pursuant to 37 CFR 1.121, the examiner should not object to the claim as to matters of form but rather should amend the claim by examiner’s amendment to include the words “and described.”
Form paragraphs 15.62, 15.63 and 15.64 may be used in international design applications as appropriate.
¶ 15.62 Amend Claim “As Shown”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown.”
Examiner Note:
- 1. In bracket 1, insert –must be– or –has been–.
- 2. In bracket 2, insert –I– or –We–.
- 3. In bracket 3, insert title of the article in which the design is embodied or applied.
¶ 15.63 Amend Claim “As Shown and Described”
For proper form (37 CFR 1.153 or 37 CFR 1.1025), the claim [1] amended to read: “[2] claim: The ornamental design for [3] as shown and described.”
Examiner Note:
- 1. In bracket 1, insert –must be– or –has been–.
- 2. In bracket 2, insert –I– or –We–.
- 3. In bracket 3, insert title of the article in which the design is embodied or applied.