How to overcome PCT Patent Rejections received on Drawings
How to overcome PCT Patent Rejections received on Drawings: Patent drawings form an important part of a patent application. It is estimated that a large number of patent rejections happen in the initial stage of filing the patent applications. Particularly, errors in patent drawings (design patent applications) are regarded as one of the primary reasons why a rejection might happen.
Patent drawings are the most ignored part of a patent application although their relevance is critical in creating formal patent drawings. Adding patent drawings into a patent application enhances the visual appearance of the invention as at times a description alone cannot create an actual understanding of the invention. Patent drawings act as a visual language that helps professionals and general public better understand the purpose of the invention.
It is critical that patent sketches are converted into formal patent drawings before filing for a patent application. Failure to do so can result in an office action for not following the guidelines laid out for patent drawings. Patent drawings not only help the inventor but proves to be useful to the examiner too in order to better understand the invention. As per the PTO guidelines, drawings should be included wherever applicable.
Let us get familiar with the ways to overcome PCT patent rejections that are received on patent drawings.
Step 1: How to read an OA form
Let us get familiar with how points can be recognised to prevent rejection in an OA with the example of a PCT Invitation form. This becomes helpful in correcting defects in an international application and helps to understand the common points of rejection that are considered as a standard process on a global level by different judiciaries.
We will learn about the basic format of an office action and why drawings other than all other documents make it easier to respond to an OA.
Here we have an OA form (as an example only) with an invitation to correct the defects by PCT.
Now as we can see, the office action is based on the rules defined by PCT guidelines mentioned in articles 3 (4) (i) and 14 (I) and rule number 26.
This can be different for different PTO offices or different countries. It involves an address that belongs to the applicant, A file’s reference number assigned to the applicant.
The Application number, mailing date, filing date, the defined limit for the applicant to respond to the patent rejections before filing them again and the name of the applicant is mentioned therein. Any point that has not been followed as per the guidelines set by the offices can be seen with a cross marked box against it.
Highlighted here is the box which shows us the reason of rejection and as we can see, it is due to the defects in drawings that have been filed, like most of the other office actions.
The rest of the form includes the address of the receiving office, as well as the name and contact details of the examiner.
Step 2. Understanding the defects in sheets containing drawings and how to overcome them
Let us go through the second page of this OA that includes defects based on Sheets containing drawings. We will also discuss the common/universal errors and how to resolve them:
a. The first column in the table above shows – “the sheets do not admit of direct reproduction”
Solution: It is crucial to not use the sheet which you have used for basic or rough ideas drawn to it for filing as it can lead it to a rejection.
b. Column b shows – “the sheets are not free from creases, cracks, folds”
Solution: When you are filing a patent through drawings, the sheets should be free from any folds, crease, or any kind of damage or distortion.
c. Column c shows – “one side of the sheet is not left unused”
Solution: Here, side of the sheets other than the side containing drawings should be left blank.
d. Next rejection point is – “the paper of the sheets is not flexible/strong/white/smooth/non-shiny/durable”
Solution: Sheet submitted for filing should be strong enough to withstand several copies & other handlings.
e. Next objection is – “the sheets are not A4 size (29.7cm x 21cm)”
Solution: The sheet size should be A4 in all cases unless it is required to have them in letter size by certain countries.
f. Next, we have a comment on the margins of the sheets.
Solution: Drawings should be kept in sheets with margins as defined by the guidelines like it should be: (top: 2.5cm; left side: 2.5cm; right side: 1.5cm; bottom: 1cm)
g. The sheets are not numbered in consecutive Arabic numerals (e.g. 1/3, 2/3, 3/3)
Solution: The numbering of sheets also sometimes becomes a big reason for rejection. Which can be due to not consulting a professional or expert. Therefore, it is crucial that sheets should be numbered in sequence and in Arabic numerals.
h. Sheet numbers are not centered at the top or bottom of the sheets
Solution: Sheets with drawings should have sheet numbers in the center of the prescribed margins as per the guideline.
i. Sheets contain alterations/over-writings /interlineations/too many erasures & the sheets contain photocopy marks
Solution: As stated above in point b sheet should be clean and neat and should not have any kind of stain, overlapping, crossing lines, erasures, overwriting or any leftover marks of a photocopy.
Step 3. Understanding the defects based on drawings & how to overcome them
To conclude, here I have marked some of the points that are used by several country offices.
a. First one is “do not admit of direct reproduction”
Solution: Again, it was mentioned in the case of sheets too but here it has a slightly different purpose. In this case, drawings should not be filed directly to the office. There should be a proper black and white line drawing which is highly preferable by almost all of the judiciaries. We can use color or grayscale pictures too, for some specific patents only, but again it is going to take more efforts, time, expense & expertise.
b. Next point is “contain unnecessary text matter”
Solution: So this is when patent gets rejected due to the carefree & nonprofessional approach of the applicant & ended up having an OA as the drawings should not have any text or number that is not required or belonged to the drawing. And this is why you need a drafter to understand the draft & patent requirements.
d. Then we have “are not executed in durable black color; the lines are not uniformly thick and well-defined”
Solution: So, this has been a reason in many of the office actions – the drawing should have lines with persistent black color that should be uniformly thick to be long-lasting and withstand the pressure of handling several copies. It is a difficult task and it depends on the expertise of the patent illustrator who makes it precise to the requirement.
e. Next point e “contain cross-sections not properly hatched”
Solution: So, to understand this, we need to have some visualization of the patent product in mind. When we section a part or product, it divides into several subparts with their own sectioned surfaces. So, these surfaces need to be shown with a hatch filing into it where different hatch patterns can be used to indicate different surfaces. So, it is essential to have an expert who has this knowledge of hatch patterns & how can they can differentiate among the surfaces and material of different parts in drawings.
f. Next one is f “would not be properly distinguishable in reduced reproduction”
Solution: This is again an important point of objection among drawings & it keeps popping in OAs many times, especially in patent drawings that have complex & minute details. In this condition, while filing a patent, the drawings are reduced in size to two-thirds in reproduction. Indications such as “actual size” or “scale 1/2” are not permitted on the drawings since it will lose their meaning with reproduction in a different format.
In most of the design cases, it makes it difficult to differentiate between the claimed & unclaimed portions & this causes ‘to and fro’ patent rejections. A patent illustrator is capable enough of preparing drawings with fineness without compromising with the quality and claim of the patent product.
k. Point k says “contain numbers and letters of height less than 0.32 cm”
Solution: So, as we can see that this is another reason of why this patent got rejected. The size of the text that we use in patent drawings should be in detail. Although it seems much easier to maintain a constant size but this is among the most rapid reasons to receive rejection as it is essential & important to know which text to be kept & which not. Sometimes the part involving the text is too small or too large that it becomes really difficult to go by the standards. For getting it approved you will need the assistance of an expert in drawings.
m. Next, we have the point m “contain figures on two or more sheets which form a single complete figure but which are not able to be assembled without concealing parts thereof”
Solution: So sometimes a Figure is difficult to keep on a single sheet. It happens mostly in flow diagrams, piping and instrumentation diagram, electrical circuit etc. So, in order to make them ready for filing one must know how they can be split into different sheets by drawing connections among the parts of figures that it can be seen as a single figure.
n. Next point says “contain figures which are not properly arranged and dearly separated”
Solution: This becomes an issue when you try to keep many figures under one sheet, it makes the drawing messy and difficult to recognize the actual claim or essential details file reduced production as discussed in point ‘f’.
o. Point o says “contain different figures not numbered in consecutive Arabic numerals”
Solution: This is the same as the sheet numbers we have discussed in the previous section of ‘sheets contain drawings’ Similar to that it is essential to keep all figures in sequence to avoid any objection.
t. In point t it is said that drawing “are not arranged in an upright position, clearly separated from one another”
Solution: In a patent draft the figures are used to keep in upright position Whether they are in portrait sheet or in a landscape. The orientation of sheets can also lead a patent to towards the rejection.
So, these were the points that can cause a patent rejection and as mentioned above these were some of the common requirements that can be considered by most of the countries.
Step 4. “Satisfactory reproduction”
A satisfactory reproduction ensures that this patent is fit enough to be filed and as per the PCT guidelines it depends on Rule number 11 and rule number 26 of the PCT system.
These rules and points can be different for different countries or maybe they have similar rules but with different approaches or numbers.
11.1- Number of copies
11.4- Separate sheets
11.13- Special requirements for drawings
11.14- Later document
First one is 11.1: Number of copies : The list that different judiciaries have different guidelines regarding the numbers copies to be submitted while filing.
11.4 : Separate Sheets: Each element, be it request, description, claims, drawings, abstract of the international application should commence on a new sheet & all sheets of an application should be so connected that they can be easily turned when consulted, and easily separated and joined again if they have been separated for reproduction purposes.
11.12: Alterations: It suggests that each sheet should not have any alterations. Non-compliance with this rule may be authorized if the genuineness of the content is not in question and the requirements for good reproduction are not at stake.
11.13: Special requirements for drawings: So this involves all the other factors in a drawing that can be responsible for the approval or rejection of a patent. Some of these are:
Drawings with durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colourings.
Cross-sections indicated by oblique hatching should be clear.
numbers, letters and reference lines should be neat & as per the standards & etc
11.14 : Later document: The response must include the corrected drawings with replacement sheets where the figures with the defects are replaced by the amended ones. In this we must avoid adding any new matter to the patent otherwise it can cause another rejection.
Involves requirement other than drawing: it revolves around the other factors like Invitation form, time limits & many other factors that can be responsible for a rejection other than drawings.
Step 5. Other Observations
Here it is important to understand that it is not always necessary that all the amendments have been mentioned in an OA by the examiner or making the modification can ensure that your drawings are ready for the filing purpose.
As there are certain points or instructions that have been instructed in the OA which involve their effect on some or all figures.
It can be:
- the projection of the parts.
- Throughout Consistency in the drawings.
- The requirement of the product.
- Alteration in the claim of the patent.
- Other standards as per the guidelines of different judiciaries and many more.
To conclude, it is not only suggested to consult a professional drawing expert but it is an essential requirement to take help of a Patent illustrator who can match all the standards & guidelines as stated by different country offices with the use of his or her expertise, experience & knowledge of the latest software to reduce the time, effort & high expenses of a rejection. Sagacious IP is adept in Patent Drawings/Illustrations support, please visit this link to know more.
-Hemant Kumar (Illustration) and the Editorial Team