By Colin Harris
| April 8, 2011
Design Day 2011 was held on April 5 at the USPTO. Many members of our Industrial Designs group made the short walk to the USPTO and attended this annual event focused on U.S. design patents. Design Day 2011 was organized by a number of individuals, including Oblon Spivak’s Ed Tracy who is Vice-Chair of the Intellectual Property Owners Association (“IPO”) Design Rights Committee. A wide variety of speakers gave presentations, including USPTO officials, industrial designers, a judge from the Board of Patent Appeals and Interferences, and practitioners. The following article summarizes these presentations.

Robert Spear, Supervisory Patent Examiner for Technology Center 2900 ("TC 2900"), was again the Master of Ceremonies. Mr. Spear was also the Master of Ceremonies for Design Day 2010, which we discussed in a previous blog post. The theme for Design Day 2011 was “The World of Designs.”

Welcoming remarks were provided by Peggy Focarino, who is the Deputy Commissioner for Patents at the USPTO. Ms. Focarino gave an overview of some of the initiatives at the USPTO under Director David J. Kappos, and discussed Director Kappos’ desire for a transparent and collaborative patent office. In this regard, Ms. Focarino reviewed the re-designed USPTO website (www.uspto.gov), pointing out the USPTO data visualization center and Director Kappos’ blog.

Next, the new Director of TC 2900, Robert Olszewski, gave a presentation on the "State of the Design Technology Center." He reviewed statistics about design patent applications. For example, 28,559 new design applications were filed in 2010, which is an increase from the 25,806 new design applications filed in 2009. Additionally, the average time between filing a design application and receiving a first Office Action was slightly less than 9 months in 2010 and the average time from filing to issue was an impressive 14 months. For design applications being processed under accelerated examination ("the Rocket Docket") the filing-to-issue average was less than 4 months in 2010! Mr. Olszewski also indicated that design examiners have been working on a re-classification project to ensure that design applications are docketed to examiners in the appropriate art unit.

Following Mr. Olszewski, Administrative Patent Judge John Kerins, who serves on the USPTO Board of Patent Appeals and Interferences (“BPAI”), discussed adjudicating design appeals before the BPAI. Judge Kerins noted that the BPAI currently consists of 73 Administrative Patent Judges, of which 6 in the mechanical and business methods section also handle appeals for design applications. Judge Kerins then noted that there are currently approximately twenty-one thousand appeals pending, of which only thirty-eight are for design applications. We believe that this statistic nicely highlights the willingness of design patent examiners to work with applicants to advance prosecution quickly and efficiently to allowance. Judge Kerins also gave an overview of the workflow at the BPAI and discussed advocacy before the BPAI. Specifically, Judge Kerins warned against making conclusory arguments and suggested that appellants may be better served to find cases with fact patterns that resembled their own, as opposed to only relying on the cases in the MPEP.

After a short break, Joel Sincavage, Design Practice Specialist of TC 2900, spoke about “Restriction Practice in Design Applications.” Mr. Sincavage noted that the basic standard used for obviousness-type double patenting is also applied by the USPTO to determine whether to restrict two or more embodiments of a design in a single application. Specifically, Mr. Sincavage articulated a two-part standard for determining if embodiments are patently distinct, and thus a restriction requirement should be issued:  1) designs that overall do not have visually the same basic design characteristics are patentably distinct; and 2) designs having the same basic design characteristics are patentably distinct when the differences between the designs are neither de minimis nor obvious. Responding to an audience question, Mr. Sincavage noted that the standard for restriction in designs has evolved over time as the idea of obviousness has changed, as two designs may have been non-obvious decades ago, but might not be considered non-obvious today in light of advances in the art.

Dana Colarulli and James Housel of the Office of the Administrator of Policy and External Affairs (OAPEA) then provided an update on the Hague Agreement and gave an overview on the role OAPEA plays in international industrial design management. With regard to the Hague Agreement, Dana Colarulli stated that the Agreement had not yet been implemented but that progress on its implementation may occur this summer. We previously reported on the makeup, history, and the ongoing delay of the implementation of the Hague Agreement here. In presenting on the role of OAPEA, Mr. Housel described the types of industrial design training activities and policy making initiatives OAPEA is involved in and stated that these activities help to achieve the USPTO’s strategic goal of providing domestic and global leadership to improve IP policy, protection and enforcement worldwide.

Charles Mauro, Chair of the Industrial Designers Society of America (“IDSA”) Design Protection Group, delivered a talk entitled "How Recent Critical Trends in Industrial Design Will Impact Design Patent Prosecution and Defense." Pointing out that design protection is a global issue affecting global companies, Mr. Mauro highlighted the dominant factors impacting recent trends in litigation and the types of filings of recent design patent applications:  globalization, visual migration, and connectedness. According to Mr. Mauro, companies are increasingly using all types of IP protection to cover design innovations. An example is obtaining utility patents covering the hardware and software for screen designs of tablet computers, websites, and portable music players.

After lunch, Lawrence Murphy, Global Design Chief at GE Healthcare, presented on global product development at GE, and how GE’s product design has impacted the medical field. In particular, Mr. Murphy emphasized the phenomenon of reverse innovation and how products developed for a particular purpose or market can often later be redesigned for unforeseen purposes and markets. Mr. Murphy also talked about how innovative designs can inspire and shared a number inspirational product design experiences with the audience.

Eileen Hughett, Manager of the International Design Filing Center at Proctor & Gamble, then discussed the varying requirements different countries have when filing for industrial design protection and suggested several practice tips designed to help meet these varying requirements in the most efficient manner. During her presentation, Ms. Hughett repeatedly emphasized the importance of completely disclosing the design in the priority document, and noted that always filing the priority document with at least six basic views and a perspective view would help in this regard. In addition, Ms. Hughett stated that if the embodiment depicted in the six basic views and perspective view include broken lines, then a view depicting the embodiment in all solid lines should be included as some countries other than the U.S. do not allow converting the broken lines to solid lines. Additional practice tips also provided by Ms. Hughett include:

  • not using crosshatching in a figure to indicate a specific color as the cross-hatching is interpreted literally in some countries other than the U.S.;
  • most countries will not allow a priority claim for figures filed in appendices accompanying the priority document, and that priority for these views is established when they are pulled out of the appendices and expressly included in the application;
  • shading can be removed from the figures at the time of the international filing without the loss of priority in most countries with the exception of Brazil and some Asian-Pacific Rim countries including Japan and China; and
  • many countries only allow one embodiment to be included in the application, however multiple applications can be filed from a priority document containing multiple embodiments.
Brad Lacey offered a lively presentation on Converse as evolving over time from a rubber and shoe factory to an idea factory. Mr. Lacey described innovation as a story created by cultural experiences and lifestyles, where the difficulties and failures of designing a new product result in a seemingly simple, but painstaking result. He focused on the importance of design patents as not only protecting a Converse “double-upper” Chuck Taylor shoe design, but also as providing an emotional boost to designers in validating and encouraging their arduous tasks.

The final presenter for the day, Christopher Carani, provided an update on case law developments since the Egyptian Goddess case was decided en banc by the U.S. Court of Appeals for the Federal Circuit in 2008. Mr. Carani noted that, according to his research of design patent cases since April 2010, no written claim construction of a design patent has occurred in a district court, which he states is great news for patentees. In reviewing recent cases, Mr. Carani questioned whether summary judgment is appropriate for infringement issues since the construction of a design patent claim appears to be an issue of fact, which should be decided by a jury. He also questioned recent court decisions, such as the Richardson case discussed in a previous blog post, that “ignore” features deemed “functional,” and submitted that such claim construction was actually claim “deconstruction,” leaving few features or confusing instructions for a jury to consider. Mr. Carani stated that district courts should not parse out a design into functional/design components, but focus on the overall appearance of the design.

Design Day 2011 included presentations on many different topics that are currently shaping design patent practice. As evidenced by the international flair of the presentations, design patents continue to be an important form of intellectual property protection both in the U.S. and abroad.

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