2920.04(b) Reproductions (Drawing Figures) [R-07.2022]
37 CFR 1.1026 Reproductions.
Reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions.
Every nonprovisional international design application must include a reproduction of the claimed design. A reproduction may be either a drawing, in black and white or in color, or a photograph of the industrial design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be a clear and complete depiction of the design applied to the article designated in the title, and that nothing regarding the design sought to be patented is left to conjecture.
Formal requirements for reproductions applicable to nonprovisional international design applications are set forth in Hague Agreement Rule 9 and Part Four of the Administrative Instructions. See 37 CFR 1.1026. Hague Agreement Rule 9 and the relevant provisions of the Administrative Instructions are reproduced in MPEP § 2909.02. Drawing requirements set forth in 37 CFR 1.84 do not apply to nonprovisional international design applications, except for those set forth in 37 CFR 1.84(c). See 37 CFR 1.1061(b).
Figure numbering requirements for international design applications are different from figure numbering requirements for design applications filed under 35 U.S.C. chapter 16. Pursuant to Administrative Instruction 405, “[w]hen the same industrial design is represented from different angles, the numbering shall consist of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on).” The figure numbering appearing in the published international registration should be preserved during prosecution of the nonprovisional international design application before the USPTO. If designs are cancelled, for example, as a result of a restriction requirement, applicants should not renumber the figures of the remaining design(s).
Reproductions published as part of the international registration have been reviewed by the International Bureau for compliance with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions and thus should not be objected to by the examiner on such grounds. See Hague Agreement Article 12(1). Amended reproductions that are submitted directly to the Office pursuant to 37 CFR 1.121 are not subject to review by the International Bureau and thus may be objected to under 37 CFR 1.1026 as to matters of form where appropriate. Form Paragraph 29.10 may be used to object to amended reproductions that fail to comply with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative Instructions.
¶ 29.10 Reproductions Objected to, Amended Reproductions Do Not Comply With Formal Requirements
The amended reproductions received on [1] are objected to because [2]. See 37 CFR 1.1026.
Examiner Note:
- 1. Use this form paragraph in an international design application to object to amended reproductions that fail to comply with the formal requirements for reproductions set forth in Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of the Administrative Instructions thereunder. Do not use this form paragraph to object to reproductions that were contained in the international registration published by the International Bureau.
- 2. In bracket 1, insert the date the amended reproductions were received.
- 3. In bracket 2, insert the reason for the objection, for example, –the reproductions are not of a quality permitting all the details of the industrial design to be clearly distinguished– or –the reproductions contain explanatory text or legends–.
- 4. Follow this form paragraph with form paragraph 15.05.04.
When inconsistencies are found among the views, the examiner should object to the reproductions and request that the views be made consistent. Pursuant to Hague Agreement Rule 9(4), “[a] Contracting Party may however refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design.” When the inconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite. See MPEP § 1504.04, subsection I.
¶ 29.11 Reproductions Objected to, Design Not Fully Disclosed in Reproductions
The reproductions are objected to for failing to fully disclose the industrial design because [1]. See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
Examiner Note:
- 1. Use this form paragraph in an international design application where the reproductions are not sufficient to fully disclose the industrial design, but such failure does not render the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112. This may occur, for example, where there are minor inconsistencies in the illustration of the design among the different views of the design. Where the failure to fully disclose the industrial design in the reproductions renders the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112, use form paragraph 15.21 or 15.22, as appropriate, instead of this form paragraph.
- 2. In bracket 1, explain why the reproductions are not sufficient to fully disclose the industrial design.
- 3. Follow this form paragraph with form paragraph 15.05.04.
The practice set forth in MPEP § 1503.02, subsections I-IV with respect to views, surface shading, broken lines, and surface treatment is generally applicable to nonprovisional international design applications.
In addition to the use of broken or dotted lines to indicate matter shown in a reproduction for which protection is not sought, Administrative Instruction 403 permits such matter to be indicated in the description and/or by coloring. See MPEP § 2920.05(c) regarding considerations under 35 U.S.C. 112 when indicating matter pursuant to Administrative Instruction 403. Form paragraph 29.20 may be used in an international design application as appropriate.
¶ 29.20 Matter Not Forming Part of Design (International Design Application)
Matter, such as environmental structure or portions of the “article,” which is shown in a reproduction but for which protection is not sought may be indicated by statement in the description and/or by means of dotted or broken lines or coloring in the reproduction. See 37 CFR 1.1026 and Hague Agreement Administrative Instruction 403.
Examiner Note:
- Use this form paragraph only in an international design application.