Using Rule 132 Declarations in Design Patent Prosecution
Executive Summary: Declarations under 37 C.F.R. § 1.132 can strengthen design patent applications by supplying evidence addressing ornamentality, obviousness after LKQ, and the connection between commercial success and the claimed design. Their persuasive value depends on knowledgeable witnesses, reasoned explanations, and supporting materials tied to what the drawings actually claim. Inventor testimony can be particularly useful in explaining aesthetic choices, while contemporaneous records and other corroborating evidence strengthen the factual foundation; the need for independent corroboration depends on the circumstances rather than a blanket requirement applicable to every inventor declaration. Commercial success and industry praise may establish nexus through an appropriate presumption or direct evidence, even when significant unclaimed features prevent reliance on the presumption. Declarations may also explain what the original disclosure conveys, but cannot supply missing subject matter. This article examines how to select declarants, substantiate material assertions, distinguish factual design opinions from legal conclusions, and submit evidence while it can receive consideration. It also explains the different procedures for challenging denial of entry and an examiner’s substantive assessment, along with the consequences of choosing a continued prosecution application or a conventional continuing application.
Introduction
A design patent application can present a clear visual disclosure and still encounter a rejection that turns on facts the drawings cannot establish. An examiner may conclude that a housing's appearance is dictated by function, that an ordinary designer would combine features from different products, or that commercial success reflects technical performance rather than the claimed appearance. A declaration under 37 C.F.R. § 1.132 can place relevant evidence into the prosecution record and give the examiner a factual basis for reconsidering those conclusions.
The strongest declarations begin with the disputed proposition. They identify who knows the relevant facts, explain how that person acquired the knowledge, and supply supporting materials. Inventor testimony often provides a useful starting point, particularly for explaining aesthetic choices. Its persuasive force improves when the record also contains contemporaneous documents or other evidence supporting material assertions. Practitioners should plan for that support while distinguishing case-specific evidentiary requirements from a categorical rule demanding independent corroboration for every inventor declaration.
The Role of Rule 132
Section 171 authorizes patents for new, original, and ornamental designs for articles of manufacture and generally applies the patent laws to designs. Rule 132 supplies a procedural vehicle for evidence traversing a rejection or objection on a basis not otherwise provided for. It therefore has applications well beyond the technical experiments commonly associated with utility-patent prosecution. 35 U.S.C. § 171(a)–(b); 37 C.F.R. § 1.132.
A declaration supplements the prosecution record with evidence concerning the application and the asserted grounds of rejection. In ordinary domestic design practice, the claim identifies the article and refers to the design as shown, or as shown and described. The drawings and any proper description consequently determine what the applicant seeks to protect. Evidence concerning a commercial product must be matched to that claimed subject matter, including the treatment of broken lines and the boundaries of a partial design. 37 C.F.R. §§ 1.152–1.153; U.S. Patent & Trademark Off., Manual of Patent Examining Procedure §§ 1503.01(III), 1503.02(III) (9th ed., rev. 01.2024, Nov. 2024) [hereinafter MPEP].
A declaration is not required merely because an examiner has issued a rejection. The examiner initially bears the burden of establishing a prima facie case of unpatentability. After the applicant submits evidence or argument, patentability is evaluated on the entire record. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Counsel should therefore identify whether the response needs additional facts, a correction of the legal analysis, or both. Preparing testimony is most useful when it supplies information material to a disputed factual premise.
Establishing Ornamentality
A useful article may have a patentable ornamental design. The inquiry concerns whether the claimed appearance, considered as a whole, is dictated by the article’s use or purpose. The presence of functional components does not alone resolve that inquiry. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123–24 (Fed. Cir. 1993).
The USPTO expressly recognizes Rule 132 declarations as a means of responding to a lack-of-ornamentality rejection. An applicant or representative of the company that commissioned the design may identify the aesthetic considerations that influenced its creation and explain which features embody those considerations. The Office also recognizes advertising emphasizing appearance and evidence of possible alternative designs. MPEP § 1504.01(c)(III)–(IV). These instructions make the development history a potentially valuable part of the prosecution record.
For example, a declaration addressing a product housing could explain why the designer selected a continuous curved silhouette over a stepped profile, how the junction between two surfaces was intended to appear, and which alternatives were considered. Dated design briefs or correspondence may show that the client requested a particular visual character. The testimony should connect those decisions to features appearing in the application rather than discuss the designer’s general commitment to attractive products.
Alternative configurations can help establish freedom of visual choice, but their existence does not automatically establish ornamentality. Their practical utility matters. A purported alternative that cannot perform the relevant function provides little support for the asserted design freedom. Courts may also consider related utility patents and advertising describing functional advantages. Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1455–56 (Fed. Cir. 1997). A useful submission explains how the alternatives work and addresses material evidence that appears to tie the selected appearance to functional necessity.
The Federal Circuit recently reinforced this point in an infringement case addressing claim construction. In Range of Motion Products, LLC v. Armaid Co., the court explained that alternative designs can be important and potentially dispositive, but their existence does not categorically prevent consideration of other relevant functionality evidence. It also examined whether the proposed alternative offered comparable functional capabilities. Range of Motion Prods., LLC v. Armaid Co., 166 F.4th 981, 989–90 (Fed. Cir. 2026). This supports evaluating the substance of proposed alternatives alongside the remaining evidence.
Concealment during ultimate use presents a related issue. In In re Webb, the Federal Circuit rejected an analysis that treated a hip implant’s concealment after implantation as dispositive. Appearance could matter during an earlier stage of the article’s commercial life. The court remanded for consideration of the evidence; it did not hold that any pre-use visibility necessarily establishes ornamentality. In re Webb, 916 F.2d 1553, 1557–58 (Fed. Cir. 1990). A declaration should therefore explain when appearance matters and to whom. A catalog or sales presentation is more useful when it demonstrates aesthetic significance than when it merely permits a purchaser to identify the article or evaluate its operation.
Addressing Obviousness After LKQ
The en banc decision in LKQ replaced the rigid Rosen–Durling requirements with a flexible application of the Graham factors. It eliminated the “basically the same” threshold for primary references and the “so related” restriction on secondary references. The analysis still requires an identified, existing primary reference, generally the design most visually similar to the claimed design. LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1295–98 (Fed. Cir. 2024) (en banc); Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Declarations can address the factual premises of that analysis. An experienced designer may explain the relevant field, customary sources of inspiration, and the significance of visual differences. Each reference must qualify as analogous art. LKQ recognized designs from the same field of endeavor while leaving the full treatment of art outside that field for further development. A different product category therefore does not establish nonanalogousness by itself. LKQ, 102 F.4th at 1296–98.
The USPTO’s implementing guidance requires a comparison of overall appearance from the perspective of an ordinary designer. Where the rejection relies on modification or combination, the record must support a reason that such a designer would make the proposed changes without impermissible hindsight. That reason need not appear expressly in the references themselves. U.S. Patent & Trademark Off., Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations LLC 2–3 (May 22, 2024).
Practitioners should read older MPEP passages describing the Rosen–Durling thresholds in light of LKQ and the Office’s implementing guidance. In January 2025, the USPTO removed form paragraph 15.68 because it was inconsistent with LKQ and revised related examiner notes, expressly superseding the corresponding MPEP content. U.S. Patent & Trademark Off., Revised Form Paragraphs for Design Patents and Applications 1 (Jan. 14, 2025).
Practitioners can organize testimony around the actual steps in the rejection. If the examiner proposes moving a decorative band from one product onto another, the declarant can address how the proposed change affects proportion, contour, and visual continuity. Contemporaneous industry materials may support or undermine the asserted practice of transferring that feature. An annotated comparison should preserve the complete views and explain how the identified differences affect the overall appearance. Assertions that the design is “unique” or that the references look different provide little guidance without that explanation.
The declaration should supply facts and reasoned design opinions, while counsel’s remarks should explain their legal significance. A witness may address customary design practices, the visual consequences of a proposed modification, or the factual basis for combining references. A bare conclusion that the claimed design is “nonobvious” adds little; the MPEP advises against expert opinions on that ultimate legal issue. MPEP § 1504.03(III).
The declarant should also identify the relevant historical perspective. Present-day preferences may provide poor evidence of what an ordinary designer would have understood at the legally relevant time. Where testimony rests on experience spanning several years, identifying particular projects, publications, or industry practices helps the examiner evaluate its relevance.
Connecting Commercial Evidence to the Claimed Design
Commercial success, industry praise, and copying can support nonobviousness. LKQ preserved those established considerations while leaving the significance of certain others, including long-felt need and failure of others, for future cases. LKQ, 102 F.4th at 1300. Such evidence requires careful attention to nexus.
In Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit rejected a presumption of nexus where the commercial product contained significant unclaimed functional features. Treating those features as ornamentally insignificant did not establish that the product was coextensive with the claimed design. The court also found the evidence insufficient to connect success and praise to the claimed design’s distinctive characteristics. Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1276–79 (Fed. Cir. 2021).
Two routes to nexus remain available. An applicant may obtain a rebuttable presumption by tying the evidence to a product that embodies, and is coextensive with, the claimed design. If the presumption is unavailable, the applicant may establish nexus directly through evidence connecting the results to the claimed design’s distinctive characteristics. MPEP § 716.01(b); Campbell Soup, 10 F.4th at 1276–79. The declaration should identify whether the applicant relies on a presumption, direct proof, or both, and supply the supporting facts.
A prosecution declaration should identify the product versions covered by the sales evidence and explain their correspondence to the drawings. A change in revenue after a redesign may warrant investigation, but the analysis should also consider changes in price, distribution, advertising, or performance. Customer research can be particularly helpful when it identifies the visual characteristics that influenced purchasing decisions. An award should be supported by the award criteria and the relevant evaluation, especially if the competition also rewards engineering or sustainability.
Corroborating the existence of sales and establishing their connection to the claimed design are separate tasks. Reliable financial records can prove commercial results without explaining their cause. The declaration should make that additional connection through evidence appropriate to the asserted relationship.
Explaining the Original Disclosure
Rule 132 evidence may help explain what the original drawings convey to a skilled reader. A knowledgeable witness might address a drawing convention or explain why an apparent inconsistency does not create uncertainty about the claimed appearance. The assessment remains tied to the application’s disclosure.
In re Maatita illustrates why disclosure sufficiency depends on the design being claimed. The Federal Circuit held that a single plan view could adequately disclose the shoe-bottom design at issue, even though the drawing did not resolve every possible three-dimensional implementation. The inquiry considered whether a skilled artisan, viewing the design from the perspective of an ordinary observer, would understand its scope with reasonable certainty. In re Maatita, 900 F.3d 1369, 1375–78 (Fed. Cir. 2018). The decision does not authorize later testimony to supply omitted subject matter.
A later-prepared rendering may illustrate an interpretation already supported by the application. It cannot supply an undisclosed contour or establish possession of a newly selected portion merely because the inventor says that portion was intended. Written-description support must be found in the original disclosure, and amendments may not introduce new matter. 35 U.S.C. §§ 112(a), 132(a); 37 C.F.R. § 1.121(f); In re Owens, 710 F.3d 1362, 1366–68 (Fed. Cir. 2013). Counsel should identify the particular original views supporting the witness’s explanation and label explanatory exhibits so their role is clear.
Choosing the Declarant and Corroborating Inventor Testimony
The appropriate witness depends on the proposition requiring proof. The inventor may be best positioned to describe aesthetic choices. An industrial designer may explain ordinary design practices. A customer may explain why appearance influenced a purchasing decision, while a business representative may authenticate sales records. Rule 132 practice permits testimony from a person with knowledge of the asserted facts; independent expert testimony is not invariably necessary. Gregory S. Emch, U.S. Patent & Trademark Off., Declaration Practice Under 37 CFR 1.132 (Rule 132) 4–5 (Mar. 28, 2023).
Each declaration should establish the witness’s qualifications, personal involvement, and relationship to the applicant before presenting substantive assertions. It should disclose any interest relevant to evaluating the testimony; an expert’s interest in the outcome and the factual support for the opinion bear on evidentiary weight. MPEP § 716.01(c)(III). The declaration should distinguish firsthand observations from opinions drawn from identified materials. A designer’s participation in development does not automatically establish knowledge of customer preferences, and a sales executive’s access to revenue figures does not necessarily establish expertise in historical design practices.
Corroboration deserves particular attention when an inventor recounts earlier events or makes assertions favorable to patentability. In EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., the Federal Circuit held that an inventor’s declaration was insufficient to establish that the portions of an earlier patent relied upon as prior art and the claimed subject matter were the work of the same inventive entity. The declaration concerned events approximately twenty years earlier and provided no supporting context, explanation, or evidence for its attribution of the relevant subject matter. EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345–48 (Fed. Cir. 2017). Although that case arose in an inter partes review involving pre-AIA prior art, it provides a practical warning about relying on an interested witness’s bare assertion.
The court also declined to require contemporaneous documentary evidence in every case. Corroboration is assessed in light of the pertinent evidence and circumstances, and independent circumstantial evidence may suffice. Id. at 1347–48. Similarly, when responding to a proposed corroboration requirement during the AIA rulemaking concerning Rules 130 and 131, the USPTO explained that the need for corroboration in ex parte examination depends on the particular facts. Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11,024, 11,044 (Feb. 14, 2013). These authorities support careful attention to evidentiary sufficiency without treating every inventor declaration as ineffective unless accompanied by an independent witness.
In design prosecution, useful corroboration may already exist in ordinary development records. A design brief can document aesthetic objectives. An email transmitting alternative sketches can help establish what was considered and when. A CAD revision history may confirm the sequence of changes. A commissioning client or manufacturer may have firsthand knowledge of particular decisions. Counsel should explain the origin and relevance of those materials rather than attach a large collection and leave the examiner to reconstruct the account. A second witness who merely repeats the inventor’s narrative adds little independent support.
The evidence must support the particular assertion. An authenticated sketch may substantiate a development decision but provide no basis for attributing commercial success to that decision. In Campbell Soup, the inventor’s attribution of success to label-area proportions lacked record support. The court also explained that the claims did not require a particular label-area size or spacing from the can because the label-area boundaries appeared in broken lines. Campbell Soup, 10 F.4th at 1278–79. Corroboration and claim correspondence must therefore be addressed together.
This discipline also improves the drafting process. Counsel can organize each material assertion with its source, supporting exhibit, and connection to the rejection. Any unresolved inconsistency should be investigated before execution. When using a declaration under Rule 68, the document must include the required statements concerning personal knowledge and information and belief, together with the prescribed warning about willful false statements. 37 C.F.R. § 1.68. Formal execution gives the submission its evidentiary form; the factual explanation and supporting record give it persuasive weight.
Selecting the Correct Procedure
The inventor’s declaration under Rule 63 serves a different purpose from a Rule 132 submission traversing a rejection. Compliance with the inventor’s oath or declaration requirements does not itself establish the factual propositions needed to overcome a particular rejection. 35 U.S.C. § 115; 37 C.F.R. §§ 1.63, 1.132.
Likewise, an applicant seeking an AIA prior-art exception based on attribution or a qualifying earlier public disclosure should consider Rule 130 and its specific requirements. Rule 132 is not a general means of removing a disclosure that otherwise qualifies as prior art. In applicable pre-AIA cases, attribution declarations and prior-invention declarations follow different procedures under Rules 132 and 131. 37 C.F.R. §§ 1.130–1.132; MPEP §§ 715, 716.10, 717.01. The choice should follow the governing statute and the proposition being established, rather than the label used on the declaration.
Timing and Examiner Consideration
Developing the evidence before final rejection generally provides the clearest opportunity for consideration. Timely evidence must be evaluated, and an examiner who finds it insufficient must explain the deficiency. A generic statement that the declaration lacks validity or fails to match the claim’s scope does not provide the required explanation. MPEP § 716.01. Counsel’s accompanying remarks should identify the paragraphs and exhibits addressing each disputed premise.
After final rejection, entry is not assured. Before or on the date of filing an appeal, Rule 116(e) requires a showing of good and sufficient reasons why the evidence is necessary and was not presented earlier. 37 C.F.R. § 1.116(e). After the appeal date but before the appeal brief, Rule 41.33(d)(1) additionally requires the examiner to determine that the evidence overcomes all rejections under appeal. Other evidence submitted after appeal is generally excluded except through the specified reopening or remand procedures. 37 C.F.R. § 41.33(d). Waiting until the appeal brief to develop the factual record can therefore leave useful evidence outside the merits review.
Counsel should distinguish a refusal to enter a declaration from a determination that an entered declaration is unpersuasive. Questions of formal sufficiency and propriety, including denial of entry, generally proceed by petition. The examiner’s substantive assessment of entered evidence is reviewed on appeal as part of the challenged rejection. MPEP § 1002.02(c), item 3(c); Gregory S. Emch, U.S. Patent & Trademark Off., Declaration Practice Under 37 CFR 1.132 (Rule 132) 54 (Mar. 28, 2023).
Design prosecution also requires a different approach to continued examination. RCE practice is unavailable for design applications. A continued prosecution application under Rule 53(d) may be available when the immediate prior application is an eligible domestic design application, but a CPA cannot be filed directly from an international design application. An appropriate continuing application under Rule 53(b) may provide another route. 37 C.F.R. §§ 1.53(b), (d)(1), 1.114(e)(4)–(5); MPEP § 201.06(c)–(d).
A CPA request also includes a request to expressly abandon the prior application as of the CPA filing date. Applicants wishing to keep the prior application pending should account for that consequence when choosing between a CPA and a separate continuing application under Rule 53(b). 37 C.F.R. § 1.53(d)(2)(v).
The evidentiary record requires attention when using those procedures. Rule 132 evidence carries into a CPA, but evidence from the parent is not automatically part of a continuation filed under Rule 53(b); a copy and appropriate explanatory remarks should be submitted when reliance is intended. MPEP § 201.06(c)(IX). The filing strategy should preserve both the application’s status and the evidence needed to support the response.
Three Illustrative Applications
Consider a housing rejected as functionally dictated. The inventor identifies three configurations that accommodated the same internal components and explains why the chosen contour was preferred aesthetically. A contemporaneous client email and prototype photographs support that account. The submission is strongest if it also explains whether the alternatives satisfied the relevant operating constraints and connects the aesthetic choice to the claimed surfaces.
Next, consider a rejection combining a storage container with ornamentation from a different household product. An industry designer explains the sources ordinarily consulted for container designs at the relevant time, analyzes the proposed modification, and supports that analysis with dated trade materials. The declaration addresses the actual assumptions behind the combination. Its usefulness depends on those facts, not simply on the witness’s disagreement with the examiner.
Finally, consider a product whose sales increased after a redesign. Sales records establish the increase, while customer research identifies the appearance customers preferred. The response also addresses a simultaneous price change and confirms that the preferred features fall within the claimed portions of the design. This evidence offers a more complete basis for evaluating nexus than an inventor’s unsupported belief that appearance drove demand. None of these hypothetical submissions guarantees allowance; each illustrates how to build evidence around the issue requiring resolution.
Building the Record Before It Is Needed
Rule 132 declarations can make design prosecution more factually complete when they address ornamentality, the ordinary designer’s perspective, or the reasons for a product’s commercial reception. Their preparation should begin by identifying the disputed proposition and the person competent to address it. Supporting records should be collected with that proposition in mind.
For inventors and commissioning companies, preserving design briefs, revision histories, and communications about aesthetic choices can materially improve a later response. For counsel, the central tasks are to connect that evidence to the claimed design, select the correct procedure, and submit the record while it can be considered. A focused declaration, supported where the circumstances require and explained through precise remarks, gives the examiner a concrete basis for reassessing the rejection.
