美國設計專利再領證（包括修正）

筆記

設計專利的修正通常時機在於被核駁，包括新穎性、進步性與圖面、說明書描述的瑕疵；也可能在獲准之後提出再領證（re-issue）時提出修正；另面對重複專利的前後設計案，也需要修正。

MPEP 1509 規範設計專利的再領證審查，整理以下幾個要點：

1. 再領證不能延長專利期限
2. 修正規定在沒有新事物（new matter） 增加的前提下，可以刪除、修正與新增圖式
3. 圖式的變更應提出解釋
4. 註解修正頁
5. 刪除圖式應標示"canceled"
6. 修正圖式應標示"amended"
7. 新增圖式應標示"new"
8. 如果修正包括將實線轉為不主張範圍的虛線，應提出虛線的目的

MPEP 1509 Reissue of a Design Patent

See MPEP Chapter 1400 for practice and procedure in reissue applications. See also MPEP § 1457 regarding design reissue applications.

For design reissue application fee, see 37 CFR 1.16(*>e<). For fee for issuing a reissue design patent, see 37 CFR 1.18(b).

The term of a design patent may not be extended by reissue. Ex parte Lawrence, 70 USPQ 326 (Comm'r Pat. 1946). If a reissue application is filed for the purpose of correcting the drawing of a design patent, either by canceling views, amending views or adding new views, the provisions of 37 CFR 1.173(b)(3) must be followed. All changes to the patent drawing shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawing. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, should be submitted. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and it must be presented in the amendment or remarks section that explains the change to the drawing.

A reissue application must be filed with a copy of all drawing views of the design patent regardless of whether certain views are being cancelled or amended in the reissue application. Inasmuch as the drawing is the primary means for showing the design being claimed, it is important for purposes of comparison that the reissue of the design patent shows a changed drawing view in both its canceled and amended versions and/or show a previously printed drawing view that has been canceled but not replaced. In addition to drawing views that are unchanged from the original design patent, the drawing in the reissue application may include the following views, all of which will be printed as part of the design reissue patent:

(1) CANCELED drawing view. Such a drawing view must be surrounded by brackets and must be labeled as "Canceled." For example, FIG. 3 (Canceled). If a drawing view is canceled but not replaced the corresponding figure description in the reissue specification must also be cancelled. However, if a drawing view is cancelled and replaced by an amended drawing view the corresponding figure description in the reissue specification may or may not need to be amended.

(2) AMENDED drawing view. Such a drawing view must be labeled as "Amended." For example, FIG. 3 (Amended). When an amended drawing view is present, there may or may not be a corresponding canceled drawing view. If there is such a corresponding canceled drawing view, the amended and canceled drawing views should have the same figure number. The specification of the reissue application need not indicate that there is both a canceled version and an amended version of the drawing view.

(3) NEW drawing view. Such a drawing view must be labeled as "New" For example, FIG. 5 (New). The new drawing view should have a new figure number, that is, a figure number that did not appear in the original design patent. The specification of the reissue application must include a figure description of the new drawing view.

If a drawing view includes both a cancelled and amended version, and the change in the amended version is for the purpose of converting certain solid lines to broken lines, the reissue specification must include a statement indicating the purpose of the broken lines.

其中涉及的新事物（new matter）可參考MPEP 1504.04所規範考慮設計專利揭露義務（112），所謂新事物就是在修正過程中加入了原始申請案並未揭露的部份，無前述基礎，如果將會被依據112條規定遭遇核駁，而針對設計專利的揭露內容來看，係指申請時所繪製的所有線條，因此後續修正可以依據這些線條放寬或是限縮權利範圍。

設計專利中放寬權利範圍的修正就是將實線轉為虛線；限縮範圍就是將虛線轉為實線！
若修正包括移除平面圖而露出重疊的部份，若無產生新事物的爭議，也可能被允許。

New Matter

New matter is subject matter which has no antecedent basis in the original specification, drawings or claim ( MPEP § 608.04). An amendment to the claim must have antecedent basis in the original disclosure. 35 U.S.C. 132; 37 CFR 1.121(f). Prior to final action, all amendments will be entered in the application and will be considered by the examiner. Ex parte Hanback, 231 USPQ 739 (Bd. Pat. App. & Inter. 1986). An amendment to the claim which has no antecedent basis in the specification and/or drawings as originally filed introduces new matter because that subject matter is not described in the application as originally filed. The claim must be rejected under 35 U.S.C. 112, first paragraph. An amendment to the disclosure not affecting the claim (such as environment in the title or in broken lines in the drawings), which has no antecedent basis in the application as originally filed, must be objected to under 35 U.S.C. 132 as lacking support in the application as originally filed and a requirement must be made to cancel the new matter.

The scope of a design claim is defined by what is shown in full lines in the application drawings. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). The claim may be amended by broadening or narrowing its scope within the bounds of the disclosure as originally filed.

A change in the configuration of the claimed design is considered a departure from the original disclosure and introduces prohibited new matter ( 37 CFR 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). This includes the removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, beading, grooves, and ribs. The underlying configuration revealed by such an amendment would not be apparent in the application as filed and, therefore, it could not be established that applicant was in possession of this amended configuration at the time the application was filed. However, an amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration as defined by the court in Salmon. The reason for this is because applicant was in possession of everything disclosed in the drawing at the time the application was filed and the mere reduction of certain portions to broken lines or conversion of broken line structure to solid lines is not a departure from the original disclosure. Examiners are cautioned that if broken line structure is converted to solid lines by way of amendment, the shape and configuration of that structure must have been fully disclosed and enabling at the time the application was filed. An amendment which alters the appearance of the claimed design by removing two-dimensional, superimposed surface treatment may be permitted if it is clear from the application that applicant had possession of the underlying configuration of the design without the surface treatment at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).

Amendments to the title must have antecedent basis in the original application to be permissible. If an amendment to the title directed to the article in which the design is embodied has no antecedent basis in the original application, the claim will be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement thereof. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title directed to the environment in which the design is used has no antecedent basis in the original application, it will be objected to under 35 U.S.C. 132 as introducing new matter into the disclosure. See MPEP § 1503.01, subsection I.

Examples of permissible amendments filed with the original application include: (A) a preliminary amendment filed simultaneously with the application papers, that is specifically identified in the original oath/declaration as required by 37 CFR 1.63 and MPEP § 608.04(b); and (B) the inclusion of a disclaimer in the original specification or on the drawings/photographs as filed. See 37 CFR 1.152 and MPEP § 1503.01 and § 1503.02.

An example of a permissible amendment submitted after the filing of the application would be an amendment that does not involve a departure from the configuration of the original disclosure ( 37 CFR 1.121(f)).

An example of an impermissible amendment which introduces new matter would be an amendment to the claim without antecedent basis in the original disclosure which would change the configuration or surface appearance of the original design by the addition of previously undisclosed subject matter. In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981).

When an amendment affecting the claim is submitted that introduces new matter into the drawing, specification or title and a rejection under 35 U.S.C. 112, first paragraph is made, the examiner should specifically identify in the Office action the subject matter which is not considered to be supported by the original disclosure. A statement by the examiner that merely generalizes that the amended drawing, specification or title contains new matter is not sufficient. Examiners should specifically identify the differences or changes made to the claimed design that are considered to introduce new matter into the original disclosure, and if possible, suggest how the amended drawing, specification or title can be corrected to overcome the rejection. Form paragraph 15.51 may be used.

If an amendment that introduces new matter into the claim is the result of a rejection under 35 U.S.C. 112, first and second paragraphs for lack of enablement and indefiniteness, and it is clear that the disclosure of the claimed design as originally filed cannot be corrected without the introduction of new matter, the record of the application should reflect that the claim is seen to be fatally defective. Form paragraph 15.65 may be used to set forth this position. 

Ron