In re: Application of the Written Description Requirement to Specific Situations in Design Applications - Comments of Public Knowledge

Oct 23, 2026

Comments of Public Knowledge submitted to the United States Patent and Trademark Office address how the written description requirement of 35 U.S.C. § 112 applies to design patent applications. The submission argues that applicants may not broaden design claims by excising features from drawings beyond what is permitted by federal written-description jurisprudence. It critiques reliance on Racing Strollers, emphasizing that related dicta are nonbinding and the decision addressed continuation issues, not written description. The comments further question whether written description was clearly recognized as a distinct requirement at the time and uses case analysis to support a narrower, utility-informed approach.

LanguageEnglish

CategoryResearch & Report

FormatPDF

Pages12

Reading Time30 min

AccessFree to download

Background and purpose

Limitations on broadening design applications

Disclaiming elements via excision is not warranted

Critique of Racing Strollers precedent

Nonbinding dicta and scope issues

Uncertainty about written description as a distinct requirement

Treatment of In re Daniels

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re: Application of the Written Description Requirement to Specific Situations in Design Applications Docket No. PTO-P-2016-0001 81 Fed. Reg. 22233 COMMENTS OF PUBLIC KNOWLEDGE Attn: Nicole D. Haines Mail Stop Comments—Patents PO Box 1450 Alexandria VA 22313-1450 [DesignWrittenDescription2016@uspto.gov](DesignWrittenDescription2016@uspto.gov) Public Knowledge respectfully submits the following comments in response to the Notice and Request for Comments dated April 15, 2016. The commenter thanks the USPTO for continuing to consider this important issue of written description for design patent applications. As the USPTO is no doubt aware, design patents are receiving increased interest and attention, particularly in view of the ongoing Apple v. Samsung litigation. This increased attention makes it likely that applicants will seek out new strategies for increasing the value and scope of their design patents. The broadening techniques that are the focus of this Notice are likely at the heart of those strategies. But as discussed in these comments, the written description requirement of § 112 imposes strict limitations on the degree to which design applicants may broaden their applications through excision of features from the drawings. While certain commentershave suggested that any degree of excision is permissible so long as the remaining features are merely “clearly visible,” their cited case law is unreliable and does not support that broad view of applicants’abilities under § 112. Instead, the jurisprudence on written description for utility applications provides substantial guidance on what sorts of broadening claims are permissible; this jurisprudence should inform practice in design applications. I. A Broad View of Applicants’Ability to Disclaim Elements of a Design Application Is Not Warranted Under Federal Circuit Jurisprudence The question raised in this Notice is the extent to which an applicant may amend a design patent application or seek a continuation application that claims a subset of the elements disclosed and claimed in the original application as filed.1 Several commenters previously advocated for a very broad reading of design patent applicants’ability to broaden their applications within the bounds of the written description requirement of § 112.2 These broad readings would suggest that in almost all cases, an amendment or continuation would satisfy § 112 if it converted solid lines to broken ones, regardless of how much of the original design was excised or how little of the original remained. The cited case law, however, does not support this broad standard. The primary case relied upon is Racing Strollers, Inc. v. TRI Industries, Inc. ,3 which stated: As a practical matter, meeting the remaining requirements [i.e. , other than best mode] of § 112 is, in the case of an ornamental design, simply a question of whether the earlier application contains illustrations, whatever form they may take, depicting the ornamental design illustrated in the later application and claimed therein by the prescribed formal claim. While this quote might seem to suggest that any degree of replacement of solid lines for dashed ones would be acceptable under § 112, Racing Strollers is unreliable as precedent. For one thing, Racing Strollers concerned a specific question of law, namely whether the provision for continuation applications4 applied to design applications. The matter of the scope of § 112 was irrelevant to the case, and thus the quotation above is nonbinding dicta.5 1 These comments primarily deal with the situation where a design applicant seeks to broaden the scope of the claims through removal of previously disclosed or claimed features. Applicants may obviously also seek to narrow their claims by replacing dashed lines with solid lines. Such situations should be treated according to the same principles of law as discussed in these c

FAQs

What is the main critique of relying on Racing Strollers?

Public Knowledge contends that Racing Strollers is unreliable because the quoted language is nonbinding dicta focused on continuation application issues rather than written-description scope, and the legal distinction between written description and enablement was not clearly established at that time.

Oct 23, 2026

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