A petition drawing is needed when filling a provisional patent to the USPTO even though applicants can file color drawings with provisional applications. If you file drawings electronically, you should classify the drawing under "Drawings, other than black and white line drawings." If you don't do this, the filing system will automatically convert drawings to black and white.

When creating drawings for a patent application, it's best to avoid the use of colors. Petitions are required for non-provisional applications. Keep in mind, you won't be able to preserve the rights to a patent design with a provisional application.

Loss of Rights

You may lose your rights if you intend to rely on a provisional to file a patent design application in future. U.S. design patents can claim priority over a U.S. utility application, and U.S. utility applications can claim priority over U.S. provisional applications; however, U.S. design patents cannot claim priority over a provisional application.

Priority Claims

A design patent can use the utility patent's filing date even if the design patent claims priority over a utility patent — in turn, a utility patent claims priority over a provisional application. Since the U.S. has a one-year grace period, this could be a problem for design applications.

Countries other than the U.S. do not allow design patents — sometimes referred to as registered designs — to claim priority over utility patent applications.

This means that applicants who want design patent coverage of their UI design outside of the U.S. may not get such coverage if they follow the U.S. provisional-U.S. utility-U.S. design route. This is because there is no grace period in other countries and evaluations of designs are based on an absolute novelty standard.

As such, it's best to file design patent applications the same day as a utility or provisional patent application. You could benefit from the fact that the USPTO recently joined the Hague Agreement, which concerns the international registration of industrial designs.

Patent rules with respect to 37 CFR §1.84 allow the use of color drawings when necessary and on rare occasions, where it is the only practical medium through which the applicant can relate the subject matter to be patented. Color drawings require a petition. Currently, no database of petition decisions exists that is equivalent to that of the Board of Appeals decisions.

Granted Petitions for Color Drawings

11/495,229 — Petition Granted on June 2007:

The Applicant filed an application titled "Interactive Computer Simulation Enhanced Exercise Machine" together with a petition to present color photographs. The applicant explained that the color photos were the only practical medium through which the simulated environment generated by the disclosed subject matter could be shown.

A Supervisory Patent Examiner in T.C. 3700 granted the petition six months after it was filed.

12/288,158 — Petition Granted on Aug. 2010

The Applicant (12/288,158) filed an application titled "NLP Based Entity Recognition and Disambiguation" along with a petition to present several colored UI screenshots. However, there was no explanation as to why the use of colored screenshots was necessary. After a few months, the petition was denied by a Quality Assurance Specialist in TC 2100 for this very reason.

The applicant then filed another petition along with an explanation stating that the colored screenshots were necessary to support and point out the necessities of the claimed invention. The Quality Assurance Specialist then granted the petition stating that the petition contained the explanation required by §1.84.

11/925,065 — Petition Granted on Jun. 2010

The Applicant (11/925,065) filed a patent application together with a petition for three of the drawings to be in color. The title of the application was "Transmitting Information Effectively in Server/Client Network."

The applicant explained that the color drawings were necessary to represent the different directions that information travels. Color drawings were also necessary to represent the information itself in the server-client network. For this application, the use of color drawings was absolutely essential.

After the petition was assigned to the Art Unit, it was granted by a Quality Assurance Specialist in T.C. 2400. The decision to grant didn't comment on the sufficiency of the explanation and only stated that the first three conditions of §1.84(a)(2) were met.

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