“Failure to submit accurate patent drawings with a PCT application can result in patent rejection followed by an office action from the designated patent examiner. But here are the two key steps for overcoming rejections received on PCT drawings.”
A large number of patent applications are rejected in the initial stage of filing via the Patent Cooperation Treaty (PCT) route. One of the most common reasons for such a rejection is an error in the drawings appended to the patent applications. Notably, patent drawings not only enhance the visual appeal of an invention but also help in better understanding the invention. As per the PCT guidelines, patent drawings should be included wherever applicable. This implies that it is essential to submit the appropriate formal patent drawings with a patent application. Failure to do so can result in patent rejection followed by an office action (OA) from the designated patent examiner. But here are the two key steps for overcoming rejections received on PCT drawings.
Step 1: Understanding the Errors in Patent Drawings and Ways to Prevent/Overcome Them
a. Do Not Admit of Direct Reproduction
In case a patent application is rejected citing “Do Not Admit of Direct Reproduction” as the reason, it means the applicant filed rough sketches/drawings directly to the concerned patent office. This, however, is an incorrect method of filing. Applicants must create and file proper black and white line drawings, which are preferred by most jurisdictions. Besides line drawings, applicants can also use colored or grayscale pictures for specific patents.
b. Contain Unnecessary Textual Matter
When a patent drawing is rejected due to unnecessary textual matter, it means that the submitted drawing included frivolous text. In order to avoid such errors, applicants must not include any unnecessary text or number in the patent drawing.
c. Not Executed in Durable Black Color; Lines are not Uniformly Thick and Well-Defined
This error is one of the major reasons for most patent rejections and OAs. One way to avoid such errors is to create drawings wherein the lines have durable black color, are uniformly thick, and can withstand the pressure of handling several copies of patent drawings.
d. Contain Cross-Sections not Properly Hatched
In order to understand this error, we need to first visualize the invention/product. When we section a part of the product, we divide it into several subparts, each with its own sectioned surfaces. These surfaces need to be shown with a hatch filing where different hatch patterns can be used to indicate different surfaces. It is thus essential to understand hatch patterns and how they can be used to differentiate among the surfaces and material of different parts in the drawings.
e. Would Not be Properly Distinguishable in Reduced Reproduction
This is a common point of objection in patent drawings and is often mentioned in OAs, especially in patent drawings that have complex and minute details. In order to avoid this error, while filing a patent, the drawings should be reduced in size to two-thirds during reproduction. Further, indications such as actual size or scale ½ are not allowed in patent drawings as they lose their meaning when reproduced in a distinct format.
f. Contain Numbers and Letters of Height Less Than 0.32 cm
Applicants must use the appropriate text size in patent drawings to avoid rejections. As per the PCT guidelines, the size of the text should not be less than 0.32 cm.
g. 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
Sometimes, it is difficult to fit a figure in a single sheet. This usually happens in flow diagrams, piping and instrumentation diagrams (P&IDs), electrical circuits, etc. In order to make such figures ready for filing, applicants must split the figures into different sheets by drawing connections among the parts so that they can be seen as a single figure.
h. Contain Figures which are not Properly Arranged and Clearly Separated
When an applicant tries to include multiple figures in one sheet, the drawings appear messy. This makes it difficult for the patent examiner to recognize the actual claimed or essential details and leads to objection to the formal drawings. Thus, it is important to properly arrange the views to ensure that the patent drawings are error-free.
i. Contain Different Figures Not Numbered in Consecutive Arabic Numerals
After placing all patent drawings in the correct order, the different figures should be numbered in Arabic numerals in continuation. For instance, the first drawing should be denoted as FIG. 1, the second one as FIG. 2, and so on. It is crucial to number all figures in sequence to avoid any objection.
j. Drawings are not Arranged in an Upright Position, Clearly Separated from One Another
Whether the figures in a patent drawing are in portrait or landscape view, it is important to keep all the figures in an upright position to avoid patent rejection. This position ensures hassle-free readability of the patent drawing.
Step 2: Satisfactory Reproduction
A satisfactory reproduction of patent drawings ensures that the patent application is fit for filing at the appropriate Office. As per the PCT guidelines, this depends on Rule number 11 and Rule number 26 of the PCT system. These rules can either vary across nations or be similar, with different approaches or numbers.
- Rule 11.4 (Separate Sheets): Each element, whether it is request, description, claims, drawings, or abstract of the international application, should start on a new sheet. Further, all sheets of a patent application should be connected. This ensures that the sheets can be easily turned, separated, and joined again if they have been separated for the purpose of reproduction.
- Rule 11.12 (Alterations): As per this rule, every sheet must be free from modifications. Non-compliance with this rule is generally authorized if the genuineness of the content is not in question and the requirements for good quality reproduction are not at stake.
- Rule 11.13 (Special Requirements for Drawings): This rule involves all the other factors in a drawing that can lead to the approval or rejection of a patent. Some of these rules are:
- Drawings should be made in black, durable, adequately dark and dense, well-defined and uniformly thick, lines and strokes with no colorings.
- Cross-sections should be shown by oblique hatching and should be clear.
- Numbers, letters, and reference lines should be neat and according to the PCT standards.
- Rule 11.14 (Later document): The response to an OA must include the corrected drawings with replacement sheets where the defective figures are replaced with amended ones. Applicants should avoid adding any new matter to the patent to avoid further rejection.
When submitting a patent application, ignoring the rules of the concerned patent office or not attaching the necessary drawings often leads to rejection. Therefore, applicants must take care to prepare the drawings to match the standards and guidelines of the concerned jurisdictions using their own expertise or that of a seasoned patent illustrator.
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