| Issue: Fees, Notifications, Applicant Submissions |
Referenced Items (313, 314, 315, 316, 317, 318, 319, 320, 321, 322, 323) |
(313) Applicant-Suggested Drawing Figure
in the Publication of Patent Applications
Summary
The United States Patent and Trademark Office (USPTO) continually looks
for opportunities to streamline and improve its processes. In order to
streamline its process of publishing patent applications, reduce costs and
increase applicant satisfaction, the USPTO will begin exclusively using the
drawing figure suggested by the applicant for the front page of a patent
application publication when the suggestion is included on a compliant
Application Data Sheet (ADS), timely filed before the USPTO begins its
process of publishing the application.
Background
The USPTO publishes nonprovisional utility and plant patent applications
in accordance with 35 U.S.C. 122(b). These patent application publications,
commonly referred to as pre-grant publications, may include a drawing
figure on the front page of the publication as an illustration of the
invention. Currently, the applicant can suggest which figure should appear
on the front page of the publication by indicating the figure number on the
application transmittal letter or an ADS filed in compliance with
37 CFR 1.76. The USPTO is not bound by the applicant's suggestion, and the
figure which appears on the front page of the publication sometimes differs
from the applicant's suggestion. See, e.g., 37 CFR 1.76(b)(3) and Manual of
Patent Examining Procedure (9th ed., Rev. 7.2022) (MPEP) section 601.05(a),
subsection I.
Process Change
Beginning two months from the execution date of this notice, the USPTO
will exclusively use the drawing figure suggested by the applicant for the
front page of the pre-grant publication when the suggestion is included on
a compliant ADS, timely filed before the USPTO begins its process of
publishing the application. Accordingly, the applicant should make sure to
include the drawing figure suggestion on a compliant and timely filed ADS,
and not on an application transmittal letter, such as the USPTO form PTO/
AIA/15 titled "Utility Patent Application Transmittal." The USPTO is
eliminating its: (1) consideration of the application transmittal letter
for the applicant's figure suggestion; and (2) review of the applicant's
figure suggestion. If the applicant does not include a figure suggestion in
a compliant ADS filed before the USPTO begins its publishing process, the
USPTO will select a figure.
The USPTO strongly recommends providing the figure suggestion on a
compliant ADS filed concurrently with the application. In the event that an
applicant includes the figure suggestion on a compliant ADS which is filed
after the initial filing of the application, such as an updated ADS filed
in compliance with 37 CFR 1.76(c), please note that the USPTO's process of
publishing the application typically begins more than 14 weeks before the
projected publication date listed on the filing receipt. See MPEP section
1120, subsection IV.
The new process notwithstanding, though the USPTO will make every effort
to use the figure selected by the applicant if the applicant follows these
procedures, the USPTO continues to not be bound by the applicant's figure
suggestion. Accordingly, the USPTO will not treat its failure to use the
figure suggested by the applicant for the first page of the pre-grant
publication as a material mistake in the publication for purposes of a
corrected patent application publication under 37 CFR 1.221(b).
Contact information
Any inquiry regarding this notice may be directed to Andrew St.Clair,
Legal Advisor, Office of Patent Legal Administration, Office of the
Commissioner for Patents, at 571-270-0238 or PatentPractice@uspto.gov.
August 7, 2023 KATHERINE K. VIDAL
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1514 OG 1]
Top of Notices (313) December 26, 2023