2920.04(a) Specification [R-07.2015]
I. TITLE
37 C.F.R. 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 shown in the reproductions may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design shown in the reproductions.
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. See 37 CFR 1.1025. When the title and claim do not correspond, the title should be objected to under 37 CFR 1.1067 as not corresponding to the claim.
Form paragraphs 15.05.01 and 15.59 may be used in nonprovisional international design applications as appropriate.
¶ 15.05.01 Title of Design Invention
The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01 and 37 CFR 1.153 or 37 CFR 1.1067.
¶ 15.59 Amend Title
For [1], 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--.
II. DESCRIPTION
37 C.F.R. 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.
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 a description of broken lines or coloring, as appropriate:
¶ 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--.
¶ 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.
¶ 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--.
III. CLAIM
37 C.F.R. 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.
¶ 15.64 Addition of "And Described" to Claim
Because of [1] -- and described -- [2] added to the claim after "shown."
Examiner Note:
1. In bracket 1, insert reason.
2. In bracket 2, insert --must be-- or --has been--.