2019年12月24日 星期二

圖式修正筆記

從MPEP 1413 Drawings、,可以查得怎麼送美國專利圖式的規定,這裡特別著重在「圖式修正」,以下規定適用一般申請案,以及再領證(reissue)申請案。(這些筆記都是感謝與同事之間討論的回應)

- 37 C.F.R. 1.173 / 37 C.F.R. 1.121

美國實用(發明)專利申請案送件後,圖式為說明書的一部分,應該要一併提出,之後若有需要修正,修正的圖式應標示「Replacement Sheet」,新增圖式標識「New Sheet」,並將修正事項註解在回應(答辯)書中,即便只有一張圖要修/加,但也需要一併將其他圖式附上。

"...Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended...."

可以附上「Annotated Sheet」,作為解釋圖式修改的附圖的標記副本(marked-up copy),用以解釋圖式修正的意思。可以應審查委員要求提出「marked-up copy」。

- 37 CFR 1.84: STANDARDS FOR DRAWINGS

圖示標準規定在37 CFR 1.84。

一個範例:
https://www.uspto.gov/sites/default/files/web/offices/pac/dapp/opla/preognotice/formatrevamdtprac.pdf

Replacement sheet


Annotated Sheet:用來說明修正的內容。



其他參考:
- 37 CFR 1.121(d) - 圖式修正(https://enpan.blogspot.com/2008/10/37-cfr-1121d.html
- 美國設計專利修正筆記(https://enpan.blogspot.com/2014/12/blog-post_15.html


[法條]
MPEP 608.02(p) Correction of Drawings
....

MPEP 1413 Drawings

A clean copy (e.g., good quality photocopies free of any extraneous markings) of each drawing sheet of the printed patent must be supplied by the applicant at the time of filing of the reissue application. If the copies meet the requirements of 37 CFR 1.84, no further formal drawings will be required. New drawing sheets are not to be submitted, unless some change is made in the original patent drawings. Such changes must be made in accordance with 37 CFR 1.173(b)(3).

AMENDMENT OF DRAWINGS

The provisions of 37 CFR 1.173(b)(3) govern the manner of making amendments (changes) to the drawings in a reissue application. The following guidance is provided as to the procedure for amending drawings:

(A) Amending the original or printed patent drawing sheets by physically changing or altering them is not permitted. Any request to do so should be denied.
(B) Where a change to the drawings is desired, applicant must submit a replacement sheet for each sheet of drawings containing a Figure to be revised. Any replacement sheet must comply with 37 CFR 1.84 and include all of the figures appearing on the original version of the sheet, even if only one figure is being amended. Each figure that is amended must be identified by placing the word "Amended" at the bottom of that figure. Any added figure must be identified as "New." In the event that a figure is canceled, the figure must be identified as "Canceled" and also surrounded by brackets. All changes to the figure(s) must be explained, in detail, beginning on a separate sheet which accompanies the papers including the amendment to the drawings.
(C) If desired, applicant may include a marked-up copy of any amended drawing figure, including annotations indicating the changes made. Such a 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 drawings.
In addition, the examiner may desire a marked-up copy of any amended drawing figure, and so state in an Office action. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.

(D) If any drawing change is not approved, or if any submitted sheet of drawings is not entered, the examiner will so inform the reissue applicant in the next Office action, and the examiner will set forth the reasons for same.

相關CFR:
37 C.F.R. 1.121 MANNER OF MAKING AMENDMENTS IN APPLICATIONS.
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(d) Drawings. One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with § 1.84 or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled "Replacement Sheet." Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as "New Sheet." All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
(1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section that explains the change to the drawings.
(2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.

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37 C.F.R. 1.173 REISSUE SPECIFICATION, DRAWINGS, AND AMENDMENTS.
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(a)
(2) Drawings. Applicant must submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed. If such copy complies with § 1.84, no further drawings will be required. Where a drawing of the reissue application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The Office will not transfer the drawings from the patent file to the reissue application.
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(b)
(3) Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
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37 C.F.R. 1.85 CORRECTIONS TO DRAWINGS.

(a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. Except as provided in § 1.215(c), any patent application publication will not include drawings filed after the application has been placed on the files for examination. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c) ). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84, the drawing may be admitted for examination.
(b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.

(c) If a corrected drawing is required or if a drawing does not comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing in compliance with § 1.84 or 1.1026, as applicable, to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c) ).

Ron

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