The USPTO will closely check your drawing disclosure and compare the design you have claimed to have invented with prior art. “Prior art” would be any issued patents or published materials that dispute who was first to invent the design in question.
If your application for a design patent passes the examination, called being “allowed,” instructions will be sen to you as to how to complete the process and get your design patent issued.
If your application does not pass the examination, you will be sent an "action" or letter detailing why your application was rejected. This letter may contain suggestions by the examiner for amendments to the application. Keep this letter and do not send it back to the USPTO.
Your Response To Rejection
You have a limited time to reply, however, you can request in writing that the USPTO reconsiders your application. In your request, you can point out any errors you think the examiner made. However, if the examiner found prior art that disputes you being first with your design that you cannot argue with.In all cases where the examiner has said that a reply to a requirement is necessary, or where the examiner has indicated patentable subject matter, the reply must comply with the requirements set forth by the examiner, or specifically argue each requirement as to why compliance should not be required.
In any communication with the Office, applicant should include the all the following applicable items:
- Application number
- Group art unit number (copied from filing receipt or the most recent Office action)
- Filing date
- Name of the examiner who prepared the most recent Office action.
- Title of invention
To ensure that a time period set for reply to a USPTO action is not missed; a “Certificate of Mailing” should be attached to the reply. This “Certificate” establishes that the reply is being mailed on a given date. It also establishes that the reply is timely, if it was mailed before the period for reply had expired, and if it is mailed with the United States Postal Service. A “Certificate of Mailing” is not the same as “Certified Mail.” A suggested format for a Certificate of Mailing is as follows:
“I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Box Design, Commissioner for Patents, Washington, D.C. 20231, on (DATE MAILED)”
(Name - Typed or Printed)
––––––––––––––––––––––––––––––––––––––––––
Signature__________________________________
Date______________________________________
If a receipt for any paper filed in the USPTO is desired, applicant should include a stamped, self-addressed postcard, which lists, on the message side applicant's name and address, the application number, and filing date, the types of papers submitted with the reply (i.e., 1 sheet of drawings, 2 pages of amendments, 1 page of an oath/declaration, etc.) This postcard will be stamped with the date of receipt by the mailroom and returned to applicant. This postcard will be applicant's evidence that the reply was received by the Office on that date.
If applicant changes his or her mailing address after filing an application, the Office must be notified in writing of the new address. Failure to do so will result in future communications being mailed to the old address, and there is no guarantee that these communications will be forwarded to applicant's new address. Applicant's failure to receive, and properly reply to these Office communications will result in the application being held abandoned. Notification of “Change of Address” should be made by separate letter, and a separate notification should be filed for each application.
