Filing Photographs in Design Patent Applications

By Adnan Bohri

Applicants looking to save money or quickly file a design patent application sometimes submit photographs of the claimed article in lieu of ink drawings when filing an application. However, in many instances, filing applications with photographs ends up costing more money and taking more time to obtain a design patent compared to filing with ink drawings.

In some cases, it may be prudent to file photographs, for example, when a filing date is needed as quickly as possible prior to a public disclosure, or to prevent the loss of a priority date. After all, anyone with a digital camera can snap images within minutes showing the various views of the article. On the other hand, it could take a draftsman days or even weeks to create a complete set of ink drawings, depending on the complexity of the design.

According to the most recent PTO statistics, the average pendency for design patent applications issued in 2010 was approximately 15 months. In 2010, approximately 50% of design applications issued within 12 months of filing.

Many design patent applications, and likely most of those issuing within a year, obtain a first-action allowance. When design patent applications are initially rejected, however, the reason is typically because of indefiniteness or other problems with the drawings, rather than a rejection based on prior art.

Applications filed with photographs often result in such indefiniteness rejections, unless it can be shown that photographs are the only practicable medium for illustrating the claimed design. Examiners are not always consistent in their examination of applications, and some Examiners may take the position that photographs introduce areas of gloss or glare that prevent the Examiner from understanding the details of the claimed design. Additionally, when the design is for a translucent article, the photographs of that design can appear distorted and thus receive a rejection for being inconsistent between views. Even if the application ultimately issues as a patent, these design patents with photographs may be subject to attacks as being invalid for indefiniteness.

Rejections of an application due to non-accepted photographs end up increasing prosecution costs and ultimately delay the time to issuance, as ink drawings that match the photographs must be prepared. When replacement ink drawings are submitted to the PTO, there can be inconsistencies between corresponding elements in the ink drawings and the photographs, and the replacement drawings can raise issues of new matter, which could result in further rejections of the application.

Another issue to consider before filing photographs is the level of detail they show. Thus, photographs of designs can be narrow in scope if showing surface texture or other imperfections in an article that Applicants may not wish to have limit the claimed design. By contrast, drawings can be easily prepared without such unwanted elements, or shown in broken lines, so as to not unduly limit the scope of the design patent.

Thus, so long as the goal remains to obtain design patents as quickly and efficiently as possible, then applicants should avoid filing applications with photographs.