How to Amend Patent Application Drawings. Episode 52

Why Amend Drawings?

In the last couple of episodes, I talked about how to amend your claims. In this episode, I’m going to discuss how to amend your drawings. There are several reasons why you might need to amend your drawings. Some common reasons include misnumbered reference numbers, duplicated numbers, or a missing reference number in the drawing that was mentioned in the written description. Additionally, your original drawings may have been hand-drawn sketches that lacked clarity and needed refinement.

One very important rule to remember is that you cannot introduce new matter into your drawings. You cannot add components that were never originally shown. If you attempt to add new matter, you will receive an objection, as this is not allowed. You would need to file a new application if you want to include new matter.

If the necessary changes are substantial and impact how your invention is presented, you might be out of luck for this application and may need to file a new one. However, if the changes are minor, you can amend the drawings accordingly.

How to Amend Drawings

To amend a drawing, you must replace the entire sheet that contains the figure needing revision. If a drawing sheet contains multiple figures and one figure needs fixing, you must resubmit the entire sheet.

At the top margin of the replacement sheet, in the center, you should write Replacement Sheet. Additionally, the sheet should be numbered just as it was originally. If it was originally labeled as Sheet 1 of 4, the replacement sheet should also say 1/4, ensuring the examiner knows it is replacing the first of the four original sheets.

If the amendment is minor, such as correcting a reference number, simply make the change without adding any additional markups. In your response to the objection, explain the correction. For example, you might write:

“The examiner noted that reference number 56 in Figure 1 does not point to the correct part. Applicant has submitted a replacement sheet 1/4, which contains Figure 1. The old reference number 56 has been changed to reference number 58, which now correctly identifies the part of the invention.”

If major revisions are required, such as redrawing an entire side view that was incorrectly depicted, you may need to submit two things: a Replacement Sheet and an Annotated Sheet.

Annotated Sheets

An annotated sheet is a marked-up version of your original drawing that clearly shows what changes were made. The replacement sheet is the clean, updated version.

For the annotated sheet, take your original drawing and mark it up by crossing out incorrect lines, drawing new lines, writing correct numbers, and crossing out old numbers. In the top margin, write Amended Sheet and also include the sheet number, such as 1/4 if it is Sheet 1 of 4.

The examiner will typically indicate in the office action whether an amended sheet is required in addition to a replacement sheet. You can always submit an annotated sheet voluntarily, but if it is explicitly required and you fail to provide it, you will likely receive another objection to the drawings.

Adding a New Drawing Sheet

While you cannot add new matter, you may add a new drawing sheet if the content was already disclosed elsewhere. For instance, if you had a perspective view but forgot to include a side view that is helpful, you can add it—provided that the side view does not introduce new elements.

For a new sheet, write New Sheet at the top margin and number it appropriately. If it increases the total number of sheets, you would label it accordingly, such as 5/5 if it now becomes the fifth of five sheets.

How to Structure Your Response to Drawing Objections

It is rare to receive an objection to only the drawings while everything else in your application is approved. You will likely need to respond to additional issues, such as an obviousness rejection. In your response, include a section titled Amendments to the Drawings or Replacement Drawings and explain the changes made to comply with the examiner’s requirements.

On the first page of your office action response, summarize everything included in your response. For example, state that remarks for drawing amendments start on page 7 of the response and that replacement and annotated sheets are submitted concurrently so the examiner knows what is being addressed.

Relevant Regulations

The rules for amending drawings can be found in 37 CFR 1.121, which covers all types of amendments. Specifically, 37 CFR 1.121(d) outlines the requirements for drawing amendments.

Special Considerations for Design Patent Applications

If you receive an objection to the drawings in a design patent application, be extremely careful. Unlike utility patents, where the drawings serve to illustrate the invention, in a design patent, the drawings are the invention. Even a minor modification could be seen as an alteration of your claimed invention, which is not allowed—you would have to file a new application.

This does not mean you cannot amend drawings in a design application, but you must be meticulous. In your response, provide detailed explanations of every change and reference how the modification is supported by existing figures. This ensures there is no question that you are not introducing new matter.

Final Thoughts

That covers how to amend patent drawings. Remember to label each sheet properly with Replacement Sheet, Annotated Sheet (if required), or New Sheet and to explain the changes in your office action response.

Next week, I will go over how to amend the specification of your application, which primarily consists of the written description of your invention. I’m Adam Diament, and until next time—keep on inventing!