The USPTO granted about 400,000 patents in 2022. Utility patents make up about 90% of the grants while design patents are less than 10% of all patents granted each year (Source: USPTO). Utility patents and design patents are handled differently by the patent office and have distinct drawing requirements.
Utility patent drawings are inspected soon after the filing by the Office of Patent Application Processing (OPAP) for compliance. OPAP will send a Notice to File Corrected Application Papers and will not release applications to the Technology Centers until acceptable drawings are filed in the applications. Drawings can also be rejected by the supervisory patent examiner at the time of receiving the application or under 35 U.S.C. 112 during the examination stage.
Design patents are processed by an examiner who may issue a rejection under objections to drawings and/or under 35 U.S.C. 112 under non-enablement, inconsistency, and ambiguousness if the drawings are unacceptable. Such rejections can prove to be difficult to overcome during prosecution. Design patents rely heavily on the drawings that need to be detailed to include every feature visible during use.
A failure or inability to respond to these actions can result in application abandonment. Rejections to drawings delay the processing of the application, increase prosecution costs, and may have other implications for the Applicant and representing law firm/attorney. For instance, drawings are crucial in understanding of the invention when evaluating patent validity, infringement, and deciding on appropriate damages.
Drawing Replacements in Utility Applications
We extracted US utility applications filed in 2021 that received a notice to file corrections and where replacement drawings were filed. About 3% of all utility applications (or 60% of cases receiving a notice from OPAP to file a correction) resulted in the submission of replacement drawings.
Our team of expert illustrators have analyzed these rejections to come up with common reasons for rejections.
Common Reasons for Filing Replacement Drawing in Utility Applications
- Text/Font Size
- Excessive text
- Alterations/Overwriting/Interlineation
- Darkness
- Blurry images
- Color images
- Margin
- Shading
- Incorrect Orientation
- Incorrect Figure number
- Mismatch with specification
- Other inconsistencies
Drawing rejections rarely result in the abandonment of utility applications. Only 2.3% of applications with drawing rejections stand abandoned/dead currently and even that cannot be attributed to the defects in drawings alone. However, this is a little different for design patents as described below.
Utility Drawing Mistakes Resulting in Rejections      |
Drawing Replacements in Design Applications
We extracted design applications filed in 2021 where a new/replacement drawing was filed in response to the examiner’s rejection. About 23.2% of all design applications resulted in new drawings following the rejection. About 10% of design cases filed in 2021 were abandoned following an office action indicating faulty drawings may be the reason for the outcome.
Common Reasons for Filing Replacement Drawings in Design Applications
- Preliminary amendment or amendment in response to restriction
- Inconsistency, Ambiguity, Non-Enablement
- Objections to drawings
The number of design applications with replacement drawings seemed fairly high in 2021. On further analysis, we note that many of these replacements were filed voluntarily by applicants looking to expedite allowance or in response to a restriction requirement. Several others were filed in response to an Ex parte Quayle action to correct minor inconsistencies in figures or address specific objections to drawings.
Design Drawing Mistakes Resulting in Rejections      |
Implications for Applicants and their Representative Law Firms
Our analysis showed that defective applications requiring drawing replacements is a challenge encountered by a variety of applicants encompassing different sectors and market capitalization. They are represented by a mix of law firms.
We also note that the above numbers are not normalized to the total number of applications filed by the applicants and their law firms. The rejection numbers may represent only a small percentage of the applications filed by some of the bigger companies and law firms. For instance, Samsung’s rejections represent <1% of all utility cases filed by it in 2021 while the number is much higher for some of the universities identified in the study. There may have been other mitigating circumstances that resulted in these rejections such as a lack of time, low budget, lack of access to advanced illustration tools, etc.
Notwithstanding the above, rejections of drawings represent a quality issue and potential business risk for the companies and their partner law firms. It is critical to work with a firm that can handle a variety of complexities and collaborate with your patent agents/attorneys to adapt to your specific client needs and budget expectations.
How to Prepare High-Quality Patent Drawings and Avoid Rejections
– Interview vendors on team size, experience, and other capabilities and benchmark them for their performance
– Communicate project expectations clearly (jurisdictions, deadlines, costs, etc.)
– Create an accurate rendering of your design, rough sketches, informal drawings, or photos to be shared with the illustration team
– Work with your draftsmen closely during the initial stages to ensure minimal back and forth exchanges at later stages of the project
– Invest in IP management solutions and/or work with technology-enabled vendors who can support you in digital initiatives.
Engage with IP Services Firm for a Seamless Experience
The suggestions provided here can help you avoid the common pitfalls in utility and design patent drawings. Any skilled draftsperson who understands PTO requirements can help you generate good-quality drawings given an abundance of time and an unlimited budget. However, you need an experienced and technology-driven IP services partner to help manage your growing needs with speed, quality, and enhanced customer experience.
| The services of an experienced and skilled drafting firm can prove invaluable in securing and defending patent rights. Our team of trained illustrators and project managers are exceptionally responsive to client requests and incorporate robust quality control measures to ensure you get the best drawings quickly. MaxVal’s drawings portal is a customer favorite and helps the customer order easily and track their drawings requests and project files in one place. You are automatically notified of the project status and collaborate easily through the portal or by email.  We were able to identify from the sample analysis of the rejected drawings that Maxval did not work on these dockets (to the best of our knowledge) even though we handle hundreds of projects every year for some of the top law firms and their clients. We receive both first-time requests as well as later requests to correct/amend drawings prepared by others for utility and design applications. While we strive to help our customers in both instances, there have been rare cases where we have had to turn down correction requests since the submitted drawings were inadequate and could not be fixed. To avoid such losses, we recommend engaging us at the time of patent filing. |
Check out Maxval’s Patent Drawings services to get flawless drawings that support your patent application. You may also Contact us today to find out more about how we can help in your patent quality initiatives.
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