In the context of design patents, aside from official fees and responses to office actions, one of the primary expenses associated with the application is the preparation of drawings. This makes sense, since a design patent’s sole claim is the supporting image. More so than in the case of utility applications, the scope of a design patent (and hence its potential value) rises or falls according to its supporting image.
With the continued development of digital photography and computer image rendering software, cost sensitive clients have begun to ask if they can avoid the expense of drawing preparation by providing their own digital photos or computer generated images of the design. The decision to use such images presents issues that practitioners should disclose to such clients. The general rule is that drawings must comprise black ink line illustrations, with shading, cross-hatching or stippling to the extent necessary to make the contours of the invention apparent. These are what patent attorneys have come to know as traditional patent drawings.
However, as it turns out, while the rule is clearly stated, the practice of individual examiners deviates from that rule without uniformity or predictability. A review of recently published design patents revealed that a small, but significant, proportion of recent design patents were allowed to issue with photographs or computer rendered three-dimensional images in lieu of traditional drawings. In light of this, one cannot say with any certainty whether the rule on traditional drawings (as opposed to other types of images) still reigns. A design application filed with nontraditional images could conceivably represent either a savings, in avoiding the preparation of traditional drawings, or an increased expense to the client, by virtue of the additional fees associated with responding to an office action.
The question a client understandably may ask is, why not file with black and white photographs and wait to see how the examiner responds (thereby possibly avoiding the expense associated with drawing preparation)? One caution against this approach is that, if an office action subsequently requires drawings, and if the drawings are determined to disclose a limitation or feature of the invention not adequately shown in the photographs, there is the risk of a consequent new matter rejection, with associated risk to the client’s priority rights.
A secondary issue arises in the context of computer-generated renderings. These often come either from design or engineering departments, or are lifted from promotional materials. These too can be problematic. First, the shadowing effects may well be objectionable if they are so dark that the features of the design are not completely visible. Second, a surface treatment (such as wood grain) in a drawing is considered to be an integral part of the claimed design unless it is expressly disclaimed. This can unnecessarily limit the scope of the client’s enforcement rights.
It is easy to empathize with a client’s concern regarding the cost of prosecution in general, and of drawing preparation in particular. Those concerns can be accommodated, but the foregoing risks associated with nontraditional patent images should be discussed and understood by a client before departing from traditional patent drawings in compliance with the literal word of the patent rules.