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I filed a US patent application in February and requested early publication. The patent application was just published, and the drawing on the cover page is not the one I suggested.

In fact, the drawing selected by the patent office for the cover page is just a page full of text that shows the interface for one small part of my claimed invention. That drawing is just for enablement purposes and provides no information about the invention to people looking at the cover page. Selecting that drawing seems to be a clear mistake.

But I'm not sure the patent office will see it that way. MPEP 1130 says that the patent office will republish a patent application if it made a material mistake in the publication. Otherwise I need to pay $300 if I want the application republished, and I guess they could include the same drawing again.

I would like to have a better drawing on the cover page. Anyone have any experience with this? Any advice on how to make my case with the patent office in a request for republication? I don't want to accuse them of making a stupid mistake, of course, but I think they did.

  • I believe the USPTO gets to select what drawing to use, and you don't have much say in it. So almost by definition, they couldn't have made a material mistake. However, I have no source for this, so I could be completely wrong. However, just in case it helps someone else to give you an answer: what is your motivation for wanting to change the representative drawing? The choice of representative drawing is almost purely aesthetic, and doesn't have any real effect on your application. – Maca Jul 31 '16 at 2:24
  • The reason for wanting a better picture is that many people only look at the cover page of a patent application. There are three other drawings that would be helpful to such people in quickly grasping what my invention is. The one the patent office chose is useless. It makes my application look like a stupid one. For one thing, it is text, not a drawing. I can't believe that any one at the patent office actually selected that drawing. It must have been a mistake. – Daanii Jul 31 '16 at 3:07
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"Changes to Implement Eighteen-Month Publication of Patent Applications" (which introduced the current publication regime) gives some explanation of the meaning of "material mistake":

The phrase "material mistake" means a mistake that affects the public's ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent (e.g., error in the claims, serious error in a portion of the written description or drawings that is necessary to support the claims).

In order to present your argument using the material mistake provisions, you might then be well-placed to argue that the selected figure affects the public's ability to appreciate the technical disclosure.

It may be difficult to successfully argue this point though, since the selection of a representative drawing for the cover has no bearing on the level of technical disclosure or the scope of the claims. At best, it would affect the public's ability to quickly understand the invention from a brief scan of the cover, which appears to be somewhat lower than the level required. I have also found at least one case (US 11/677983) where the USPTO ruled exactly this, in response to a request for a corrected publication. Of course, that is only one example from some time ago, but it may at least provide evidence of the approach that the USPTO takes on this.

  • Thanks for your answer. I have drafted a request and will submit it to the patent office today. My argument is that the patent office published a figure that misleads the public as to the scope of my patent application. That is different from the case you cite, which asked simply that their suggested figure be published rather than the patent office's selection, without arguing that a material mistake was made. – Daanii Sep 20 '16 at 20:05

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