How To File Color Drawings Electronically Via EFS-Web

January 19, 2011

in Practice Suggestions

Generally, when drawings for utility patent applications are required, they must be black and white line drawings.  Color drawings are permitted when they are the only practical medium to disclose a claimed invention and even then an applicant must petition the USPTO to accept them.  This petition, along with the color drawings, is typically filed by paper.  The USPTO, however, permits the electronic filing of color drawings via EFS-Web.  This post explains how to electronically file color drawings, and presents examples of electronically and paper filed petitions.

The Rules for Drawings
The requirements and Rules for patent drawings are substantially set forth in Section 608.02 of the MPEP, which should be a primary reference in the preparation of patent drawings.

Briefly, the submission of color drawings requires a petition explaining why the color drawings are necessary.  This petition is filed under 37 CFR 1.84(a)(2) and requires:

  1. An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings — “The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.”
  2. Three sets of the color drawing(s); and
  3. The appropriate fee set forth in 37 CFR §1.17(h).

Filing Color Drawings Via EFS-Web                                                                                         Avoids the Requirement for Three Sets of Color Drawing Sheets
37 CFR § 1.84(a)(2) expressly states that three sets of the color drawings are required when petitioning for the acceptance of color drawings.  Nonetheless, the USPTO advises that it will dispense with this requirement when the color drawings are filed electronically.  (See Legal Framework for EFS-WEB dated May 20, 2010, Section H). Therefore, only one set of the color drawings is necessary when filing via EFS-Web.  Dispensing with the requirement for three sets of color drawings, in turn, facilitates the electronic filing of petitions under 37 CFR 1.84(a)(2).

Applications and Proceedings in which Color Drawings May Be Filed via EFS-Web
Color drawings may be submitted via EFS-Web in most types of applications and proceedings, including:

  1. Nonprovisional design patent applications, including reissue design patent applications;
  2. Provisional applications under 35 U.S.C. 111(b);
  3. Nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
  4. U.S. national stage applications under 35 U.S.C. 371; and
  5. Reexamination proceedings for utility or design patents.

Color drawings may not be submitted via EFS-Web in international applications.

How To File Color Drawings and Petitions for Acceptance via EFS-Web
Color drawings should be indexed in EFS-Web as “Drawings – other than black and white line drawings,” which is document code “DRW.NONBW”.  Petitions under 37 CFR 1.84(a)(2) should be indexed in EFS-Web as  “Petition for review by the Office of Petitions,” which is document code “PET.OP”.

An Example of an Electronically Filed Petition

PETITION UNDER 37 CFR 1.84(a)(2) TO ACCEPT COLOR DRAWINGS

Color drawings have been submitted in this application.  The color drawings are necessary as the only practical medium by which aspects of the claimed subject matter may be accurately conveyed.  For example, the claimed invention relates to imaging systems and the color drawings are of environments with various levels of visibility, which are necessary to illustrate features of the claims.

The first paragraph of the Brief Description of the Drawings section of the Specification includes the following language:

The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

As the color drawings are being filed electronically via EFS-Web, only one set of the drawings is submitted.

Please charge our deposit account no. ______ for the requisite fee for this Petition.

An Example of a Petition Filed by Paper

PETITION UNDER 37 CFR 1.84(a)(2) TO ACCEPT COLOR DRAWING

The present application is submitted with a color drawing.  This Petition is submitted to request acceptance of the color drawing as the only practical medium by which aspects of the subject matter sought to be patented in this application may be accurately conveyed.  Specifically, drawing sheet 2/2 bears FIG. 2, which is a color drawing.

FIG. 2 is a drawing of a prior art light-emitting array exhibiting poor color uniformity.  The color drawing is necessary to clearly show the poor color uniformity.

The Specification is being amended by a Preliminary Amendment submitted concurrently herewith to include the following language as the first paragraph of the Brief Description of the Drawings:

The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

Accompanying this Petition are three copies of the drawing sheet bearing the color drawing.

Please charge our deposit account no. ______ for the requisite fee for this Petition.

Additional Points

1.  Black and white photographs, like color drawings, are not ordinarily permitted in utility patent applications. The USPTO will accept black and white photographs, however, when the claimed invention is not capable of being illustrated in an ink drawing or where the claimed invention is shown more clearly in a photograph.  Common examples include photographs of cell cultures and crystalline structures.

2.  Color photographs are accepted in utility patent applications when the conditions for accepting color drawings and black and white photographs have been satisfied.

3.  Legal Framework for EFS-Web can be found here.

© 2011, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

www.mekiplaw.com

{ 3 comments… read them below or add one }

Blaine Haarz December 21, 2011 at 4:17 pm

Reading 37 CFR 1.84(a)(2), it states “Color drawings are not permitted in international applications (see PCT Rule 11.13), or in an application, or copy thereof, submitted under the Office electronic filing system.” Going by this I assumed that any application containing color drawings must be paper filed. It seems the USPTO is ignoring this provision and accepting electronically filed applications with color drawings. Do you have any insight on this?

mike January 25, 2012 at 1:30 pm

Blaine, your observation is correct. The Rule states that color drawings are not permitted via EFS. Yet, the legal framework I mention seems to supersede the Rule. One reason might be that the Rule (I believe) was last modified six or seven years ago. In any event, the USPTO now accepts color drawings filed via EFS and actually encourages them.

Jeff Duncan August 26, 2014 at 6:17 pm

Does anyone know off the top what the fee is for filing color drawings and whether the USPTO is generally easy to approve color or picky about it?

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