Thursday, February 7, 2013

When are color drawings acceptable? A review of some Petition Decisions

The patent rules in 37 CFR §1.84 provide for color drawings "on rare occasions" when "necessary as the only practical medium by which to disclose the subject matter sought to be patented." I've always wondered how the PTO interprets this requirement. The answer isn't readily available, since color drawings require a petition, and there is no database of petition decisions equivalent to the database of Board of Appeals decisions. But I do run across Color Drawing Petitions from time to time, so in today's post I'll discuss an admittedly very small and random subset of decisions on Color Drawings Petitions. Later I'll follow up with another post discussing a few more of these decisions. 

 11/925,065 - Color Drawings Petition GRANTED Jun. 2010: The Applicant for 11/925,065 filed an application with a petition to accept 3 of the 6 drawings in color. The application was titled "Transmitting Information Effectively in Server/Client Network". The black & white version of one of the color drawings, from from the patent publication, is shown below:

As an explanation for why color was necessary, the Applicant stated:
...the use of color drawings is necessary to differentiate the information and the direction of travel of the information in the server/client network. The use of color drawings for these features of the present invention is considered essential.
After being assigned to an Art Unit, but before examination began, a Quality Assurance Specialist in T.C. 2400 granted the petition. The Decision did not comment on the sufficiency of the Applicant's explanation,  noting only that conditions (i), (ii), and (iii) of §1.84(a)(2) were met.

12/288,158 - Color Drawings Petition GRANTED Aug. 2010: The Applicant for 12/288,158 filed an application ("NLP-Based Entity Recognition and Disambiguation") with a petition to accept several user interface screen shots as color drawings. The black & white version of one of these drawings, from the patent publication, is shown below:
The petition did not include any explanation for why color was necessary. A few months after the Petition was filed, a Quality Assurance Specialist in TC 2100 denied the petition for this reason. The Applicant filed another Petition, and this time explained that "the color drawings are necessary to particularly point out and support Applicants' claimed invention." The same Q.A. Specialist granted the second petition, noting only the petition did contain the explanation required by §1.84.

11/495,229 - Color Drawings Petition Granted Jun. 2007: The Applicant for 11/495,229 filed an application ("Interactive Computer Simulation Enhanced Exercise Machine") with a petition to accept color photographs. The black & white version of one of these photographs, from the patent publication, is shown below:
As an explanation for why color was necessary, the Petition stated:
Color drawings are the only practical medium by which to disclose the simulated environment developed and generated by the disclosed subject matter of to the patent... Such details and contrast between the environment objects are only provided in color and would be lacking in a black & white photograph.
Six months after filing, the Petition was granted by a Supervisory Patent Examiner in T.C. 3700. The SPE treated the Petition as one to accept Color Photographs, since it referred to both §1.84(a) and §1.84(b) and included copies of the photographs in both black & white and color. The Decision did not comment on the sufficient of the Applicant's reason for color. Instead, the SPE simply noted that the Applicant had complied with the color photograph requirements of §1.84(b) by submitting the appropriate fee, a statement in the spec referring to color drawings, three sets of color drawings, and "a black and white photocopy accurately depicting, to the extent  possible, the subject matter shown in the color drawing."

13/033,384 - Color Drawings Petition GRANTED Mar. 2011: The Applicant for 13/033,384 filed an application ("Method for Embedding Secret Message into PNG Image") with a petition to accept several drawings in color. The specification described two of the color drawings as showing "an image before a secret message is embedded" and "the same image ... after the secret message is embedded." The black & white version of these drawings, from the patent publication, is shown below:
The Petition explained that "color drawings are believed to be the only practical medium by which to disclose the subject matter sought to be patented." Only a month after the Petition was filed, a Quality Assurance Specialist in T.C. 2400 granted the Petition. The Decision did not comment on the sufficiency of the Applicant's explanation,  noting only that conditions (i), (ii), and (iii) of §1.84(a)(2) were met.

My two cents: Seriously? You really think you need color drawings for a block diagram, a run-of-the-mill user interface, and a screen shot of a exercise simulation? The only one of these four for which color seems necessary is the last one, the one illustrating embedding a secret message. Although I can't see any difference in the publication between before and after the embedding, I can imagine that such a difference could only be expressed in color.

But there's no way you need color for the block diagram of the computer network -- the drawing already
uses different dashed lines to distinguish the difference in direction! As for the second example, not only is color not strictly necessary for the user interface, I don't even think it adds anything useful over a line drawing. Finally, the screen shot of the exercise simulation looks terrible, and line drawings would have shown the features much better.

What's the thinking here? Do patent practitioners submit color drawings simply because the drawings provided by the client are in color? Or is the rationale to save money? Note that the petition fee is only $130, and it wouldn't surprise me that a complicated user interface or screen shot would cost more than $130 to prepare as a line drawing. 

I think the PTO should provide some guidance on what is an acceptable reason for color drawings. Is the bar for the "necessary as the only practical medium" requirement of §1.84 really this low?

6 comments:

  1. The only thing to pay attention to, is that if you submit that color drawing is "the only practical way to show the claimed invention" or the like, this may limit the interpretation of what your invention is, at the end of the day.

    Other than that, it is good news. I couldn't care less if the USPTO allowed color drawings provided a fee is paid. This would be very helpful. An if this is what the USPTO does in practice, this is good news for me.

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  2. Did you find any that were not granted? Seems like there isn't much god reason to limit drawings to B&W these days.

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    1. Yes. In my next post on this topic, I'll discuss 4 more, and only 2 of those 4 were granted. May have something to do with whether petition is handled by Petitions office or by Art Unit. Still a really small sample size, though.

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    2. Agree with Chris 100%. Given that the PTO now charges you more to submit on paper (4 times as much for a small entity) and PDF files reproduce continuous tone color just fine, why haven't the patent rules caught up to late 20th century technology? The rational that continuous tone and/or color is a reproduction problem simply no longer applies.

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  3. "the use of color drawings is necessary to differentiate the information"

    Because the information is what is tots important! Lulz, abstract nonsense alert.

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  4. How about design patents? Color could be relevant in that context.

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