Drawing

35 U.S.C. 113

Drawings.

The applicant shall furnish a drawing where necessary for the

understanding of the subject matter to be patented. When the nature of such subject

matter admits of illustration by a drawing and the applicant has not furnished such a

drawing, the Commissioner may require its submission within a time period of not less

than two months from the sending of a notice thereof. Drawings submitted after the

filing date of the application may not be used (i) to overcome any insufficiency of

the specification due to lack of an enabling disclosure or otherwise inadequate

disclosure therein, or (ii) to supplement the original disclosure thereof for the

purpose of interpretation of the scope of any claim.

37 CFR 1.81  Drawings required in patent application.

[Editor Note: Para. (a) below is only applicable to patent applications

filed under

35 U.S.C. 111

on or after

December 18, 2013.]

(a) The applicant for a patent is required to furnish a drawing of

the invention where necessary for the understanding of the subject matter

sought to be patented. Since corrections are the responsibility of the

applicant, the original drawing(s) should be retained by the applicant for any

necessary future correction.

(b) Drawings may include illustrations which facilitate an

understanding of the invention (for example, flow sheets in cases of processes,

and diagrammatic views).

(c) Whenever the nature of the subject matter sought to be patented

admits of illustration by a drawing without its being necessary for the

understanding of the subject matter and the applicant has not furnished such a

drawing, the examiner will require its submission within a time period of not

less than two months from the date of the sending of a notice thereof.

cesses,

and diagrammatic views).

(c) Whenever the nature of the subject matter sought to be patented

admits of illustration by a drawing without its being necessary for the

understanding of the subject matter and the applicant has not furnished such a

drawing, the examiner will require its submission within a time period of not

less than two months from the date of the sending of a notice thereof.

(d) Drawings submitted after the filing date of the application may

not be used to overcome any insufficiency of the specification due to lack of

an enabling disclosure or otherwise inadequate disclosure therein, or to

supplement the original disclosure thereof for the purpose of interpretation of

the scope of any claim.

37 CFR 1.81 (pre-PLT) Drawings required in patent application

[Editor Note: Para. (a) below is applicable to patent applications filed

before December 18, 2013.]

(a) The applicant for a patent is required to furnish

a drawing of the invention where necessary for the understanding of the subject

matter sought to be patented; this drawing, or a high quality copy thereof,

must be filed with the application. Since corrections are the responsibility of

the applicant, the original drawing(s) should be retained by the applicant for

any necessary future correction.

*****

I.

FILING DATE IN THE ABSENCE OF DRAWING

A.

Applications Filed under 35 U.S.C. 111 on or after December 18,

2013

For applications filed on or after December 18,

2013, other than design applications,

35 U.S.C. 111

no longer

requires that an application contain a drawing where necessary for the

understanding of the subject matter sought to be patented to be entitled to a

filing date.

35

U.S.C

*****

I.

FILING DATE IN THE ABSENCE OF DRAWING

A.

Applications Filed under 35 U.S.C. 111 on or after December 18,

2013

For applications filed on or after December 18,

2013, other than design applications,

35 U.S.C. 111

no longer

requires that an application contain a drawing where necessary for the

understanding of the subject matter sought to be patented to be entitled to a

filing date.

35

U.S.C. 113

continues to provide, however, that “[t]he

applicant shall furnish a drawing where necessary for the understanding of the

subject matter sought to be patented” and that “[d]rawings submitted after the

filing date of the application may not be used (i) to overcome any insufficiency

of the specification due to lack of an enabling disclosure or otherwise inadequate

disclosure therein, or (ii) to supplement the original disclosure thereof for the

purpose of interpretation of the scope of any claim.” Thus, the absence of any

drawing on the filing date of an application where a drawing is necessary for the

understanding of the subject matter sought to be patented may result in an

applicant not being able to obtain a patent for any claimed invention presented in

the application, but except for design applications, the absence of any drawing on

the filing of an application no longer raises a question as to whether the

application is entitled to a filing date.

Pursuant to

35 U.S.C. 171

, a design

application (whether filed before, on, or after December 18, 2013) must be filed

with any required drawing to be entitled to a filing date.

The preparation of drawings for a provisional or

nonprovisional application is prudent where a drawing is necessary for the

understanding of the subject matter sought to be patented, and inclusion of such

drawing(s) with the application on filing will help ensure that the requirements

of

35 U.S.C.

113

are satisfied for any such claimed invention.

B.

Applications Filed before December 18, 2013

For applications filed under

35 U.S.C

provisional or

nonprovisional application is prudent where a drawing is necessary for the

understanding of the subject matter sought to be patented, and inclusion of such

drawing(s) with the application on filing will help ensure that the requirements

of

35 U.S.C.

113

are satisfied for any such claimed invention.

B.

Applications Filed before December 18, 2013

For applications filed under

35 U.S.C.

111

before December 18, 2013, a drawing (where necessary for

the understanding of the subject matter sought to be patented), or a high quality

copy thereof, must be filed with the application. See

pre-PLT 35 U.S.C.

111

,

35 U.S.C. 113

, and

pre-PLT 37 CFR 1.81

.

In accordance with

pre-PLT 35 U.S.C. 111

, a

specification and any necessary drawing(s) are among the requirements for an

application to be given a filing date. The first sentence of

35 U.S.C 113

requires a drawing to be submitted where such drawing is necessary for the

understanding of the invention. In this situation, the lack of a drawing renders

the application incomplete and, as such, the application cannot be given a filing

date until the drawing is received. The second sentence of

35 U.S.C.

113

addresses the situation wherein a drawing is not

necessary for the understanding of the invention, but the subject matter sought to

be patented admits of illustration and no drawing was submitted on filing. The

lack of a drawing in this situation does not render the application incomplete but

rather is treated as an informality. The examiner should require such drawings in

almost all such instances. Such drawings could be required during the initial

processing of the application but do not have to be furnished at the time the

application is filed. The applicant is given at least two months from the date of

the letter requiring drawings to submit the drawing(s).

II

cation incomplete but

rather is treated as an informality. The examiner should require such drawings in

almost all such instances. Such drawings could be required during the initial

processing of the application but do not have to be furnished at the time the

application is filed. The applicant is given at least two months from the date of

the letter requiring drawings to submit the drawing(s).

II.

RECEIPT OF DRAWING AFTER THE FILING DATE

If the examiner discovers new matter in a substitute or additional

drawing, the drawing should not be entered and the examiner should describe the new

matter that resulted in non-entry in the next Office action. A new drawing without

such new matter may be required if the examiner determines that a drawing is needed

under

37 CFR

1.81

or

37 CFR 1.83

. Form paragraph

6.37

,

reproduced in

MPEP §

608.02(h)

, may be used. The examiner’s decision would be

reviewable by filing a petition under

37 CFR 1.181

. The Technology

Center (TC) Director would decide such a petition.

III.

HANDLING OF DRAWING REQUIREMENTS UNDER THE FIRST SENTENCE OF 35 U.S.C.

113

The Office of Patent Application Processing (OPAP) will make the

initial decision in all new applications as to whether a drawing is “necessary” under

the first sentence of

35 U.S.C. 113

. A drawing will be

considered necessary under the first sentence of

35 U.S.C. 113

in all applications

where the drawing is referred to in the specification and one or more figures have

been omitted.

The determination under

35 U.S.C. 113

(first sentence) as

to when a drawing is necessary will be handled in OPAP in accordance with the

following procedure. OPAP will make the initial determination as to whether drawings

are required for the understanding of the subject matter of the invention. When no

drawings are included in the application as filed and drawings are required, the

applicant is so informed by OPAP. A filing date will not be granted if the

application was filed under

35 U.S.C

handled in OPAP in accordance with the

following procedure. OPAP will make the initial determination as to whether drawings

are required for the understanding of the subject matter of the invention. When no

drawings are included in the application as filed and drawings are required, the

applicant is so informed by OPAP. A filing date will not be granted if the

application was filed under

35 U.S.C. 111

before December 18,

2013 and applicant will be notified to complete the application (

37 CFR

1.53(e)

). If a drawing is later furnished in an application filed

under

35

U.S.C. 111

before December 18, 2013, a filing date may be

granted as of the date of receipt of such drawing.

An OPAP formality examiner should not treat an application without

drawings as incomplete if drawings are not required. A drawing is not required for a

filing date for applications, other than design applications, filed under

35 U.S.C.

111

on or after December 18, 2013. For applications filed

before December 18, 2013 a drawing is not required for a filing date under

pre-PLT 35

U.S.C. 111

if the application contains:

(A) at least one process claim including the term “process” or

“method” in its introductory phrase;

(B) at least one composition claim including the term

“composition,” “compound,” “mixture” or “pharmaceutical” in its introductory

phrase;

(C) at least one claim directed to a coated article or product or

to an article or product made from a particular material or composition (i.e.,

an article of known and conventional character (e.g., a table), coated with or

made of a particular composition (e.g., a specified polymer such as

polyvinyl-chloride));

(D) at least one claim directed to a laminated article or product

(i.e., a laminated article of known and conventional character (e.g., a

table)); or

(E) at least one claim directed to an article, apparatus, or system

where the sole distinguishing feature is the presence of a particular material

(e.g., a hydraulic system using a particular hydraulic fluid, or a conventional

packaged sutur

oride));

(D) at least one claim directed to a laminated article or product

(i.e., a laminated article of known and conventional character (e.g., a

table)); or

(E) at least one claim directed to an article, apparatus, or system

where the sole distinguishing feature is the presence of a particular material

(e.g., a hydraulic system using a particular hydraulic fluid, or a conventional

packaged suture using a particular material).

For a more complete explanation about when a drawing is required, see

MPEP §

601.01(f)

. For applications submitted without all of the

drawings described in the specification, see

MPEP § 601.01(g)

.

If an examiner determines that a filing date should not have been

granted in an application filed before December 18, 2013 because it does not contain

drawings, the matter should be brought to the attention of the supervisory patent

examiner (SPE) for review. If the SPE decides that drawings are required to

understand the subject matter of the invention, the SPE should return the application

to OPAP with a typed, signed, and dated memorandum requesting cancellation of the

filing date and identifying the subject matter required to be illustrated.

IV.

HANDLING OF DRAWING REQUIREMENTS UNDER THE SECOND SENTENCE OF 35 U.S.C. 113 -

ILLUSTRATION SUBSEQUENTLY REQUIRED

35

U.S.C.113

addresses the situation wherein a drawing is not

necessary for the understanding of the invention, but the subject matter sought to be

patented admits of illustration by a drawing and the applicant has not furnished a

drawing. The lack of a drawing in this situation is treated as an informality. A

filing date will be accorded with the original presentation of the papers. The

acceptance of an application without a drawing does not preclude the examiner from

requiring an illustration in the form of a drawing under

37 CFR 1.81(c)

e

patented admits of illustration by a drawing and the applicant has not furnished a

drawing. The lack of a drawing in this situation is treated as an informality. A

filing date will be accorded with the original presentation of the papers. The

acceptance of an application without a drawing does not preclude the examiner from

requiring an illustration in the form of a drawing under

37 CFR 1.81(c)

.

In requiring such a drawing, the examiner should clearly indicate that the

requirement is made under

37 CFR 1.81(c)

which applies when

the nature of the subject matter sought to be patented admits of illustration by a

drawing without its being necessary for the understanding of the subject matter.

Examiners making such requirements are to specifically require, as a part of the

applicant’s next reply, at least an ink sketch or permanent print of any drawing in

reply to the requirement, even though no allowable subject matter is yet indicated.

This will afford the examiner an early opportunity to determine the sufficiency of

the illustration and the absence of new matter. See

37 CFR 1.121

and

37 CFR

1.81(d)

. One of the following form paragraphs may be used to

require a drawing: