Sunday, December 22, 2013

Motorola Rushes to the USPTO With Sketchy Drawings - New Matter under 35 USC 132?

In Motorola Rushes Patent Filing for Ugliest Smartwatch, Patently Apple explains "Motorola under Google has to ensure they'll stay on top of new trends this time around" and so rushed a smartwatch application to the USPTO. Patently Apple says we will take the patent filing seriously if it was conceived by their on-site kindergarten class. After I chuckled a bit, I realized there is point to to make about this all too common practice of filing US patent applications with informal drawings.

Many patent attorneys file drawings just like those shown in the Motorola patent application and justify it by saying we wanted to lock in the earliest possible filing date and can always file formal drawings when the USPTO objects to the drawings. However, this approach ignores that if a court holds the amendment to the drawings introduced new matter, any patent claim depending on that drawing is open to a new matter challenge. Will the patent claim be invalidated? It will depend on the scope and nature of the amendments, but in amending the drawings, an applicant cannot introduce subject matter beyond that disclosed in the original application. Further, whatever you save by filing the application with informal drawings will be lost when formal drawings are required. More important, the formal drawing that looks great compared to the informal drawing may have set up an invalidity defense to any patent claim requiring the drawing for support.

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