By Colin Harris
| April 28, 2010
In inter partes reexamination 95/000,034, Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. An obviousness determination for a utility patent must consider the perspective of one of ordinary skill in the art to which the invention pertains. For design patents, obviousness is based on the perspective of designer of ordinary skill who designs articles of the type involved. As this case demonstrates, failing to appreciate the distinction can lead to dire consequences for third party requesters.


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By Philippe Signore
| April 12, 2010
The average time to obtain a US Design Patent under regular examination is about 15 months from filing to issue.  This pendency is short relative to Utility Patent Applications, which require on average over 35 months of examination before issuing.  However, some companies need Design Patent protection even faster.  For example, when an competitor is about to launch a similar product on the market, or when investors are demanding patent protection before further funding, or when the product is typically in vogue with consumers for only a short period of time, companies need a Design Patent as soon as possible.  In such situations, they can request the USPTO to examine their design patent applications under an expedited procedure provided under 37 CFR 1.155.  Under the expedited procedure, also known as the “Rocket Docket,” a design application issues on average within 5 months!


This expedited procedure is available upon request to any design applicant who complies with certain requirements, as discussed next.


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By Colin Harris
| April 8, 2010
Design Day 2010 was held on April 6 at the USPTO. A number of our attorneys walked across the street to the USPTO and attended this annual event focused on US design patents. A wide variety of speakers gave presentations, including USPTO officials, industrial designers, an ITC judge and practitioners. The following article summarizes these presentations.

Robert Spear was the Master of Ceremonies. Mr. Spear is Supervisory Patent Examiner for Technology Center 2900 ("TC 2900"), which is devoted to examining design patent applications. A number of our attorneys have conducted personal interviews with Mr. Spear, and it was a pleasure to see this well-respected design examiner act in this official capacity.


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By Andrew M. Ollis
| March 3, 2010
The U.S. Court of Appeals for the Federal Circuit issued their second significant design patent opinion in the past two weeks.  In the most recent decision, the Court affirmed a finding of no-infringement of a design patent after a district court had first construed the claim by factoring out the functional elements of the design.  Richardson v. Stanley Works, Inc., No. 2009-1354 (Fed. Cir., Mar. 9, 2010).   


The patent at issue (U.S. Design Patent No. D507,167) claimed the design for a carpentry tool known as a stepclaw.  The stepclaw includes a handle, hammer-head, jaw, and crow-bar.  The district court found that "the overall configuration of these four elements is dictated by the functional purpose of the tool and therefore is not protected by [Richardson's] design patent." Richardson v. Stanley Works, Inc., 91 USPQ2d 1604 (D. Az. 2009).  The district court construed the claim to exclude any "primarily functional" elements.  Id. at 1606.  Regarding the jaw on the stepclaw, the district court noted that "none of the prior art designs are as similar to Richardson's patented design as is Stanley's." Id. at 1607.  Often, the presence of alternative forms for a feature (e.g. a jaw) that performs a certain function suggests that the claimed form of the feature is ornamental.  However, the district court also noted that "Richardson had to design the jaw the way he did...to function as 'a step to elevate the worker without a ladder.'" Id.  Thus, the district court concluded that the "basic jaw design used by Richardson and Stanley...is primarily functional." Id.  Regarding the features determined to be ornamental, the district court found "little similarity" and noted that the differences between the two tools are substantial to find infringement.  


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By Andrew M. Ollis
| February 26, 2010
In a decision issued February 24, 2010 (Case No. 2008-1596), a panel of the Federal Circuit reversed a finding by the International Trade Commission that a design patent owned by Crocs, Inc. was not infringed by various respondents. In explaining its reasoning, the Court warned against reliance on detailed verbal descriptions of the claimed design, stating:

"This court has cautioned, and continues to caution, trial courts about excessive reliance on a detailed verbal description in a design infringement case. See, e.g., Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). In Egyptian Goddess, this court warned that misplaced reliance on a detailed verbal description of the claimed design risks undue emphasis on particular features of the design rather than examination of the design as a whole. Id. at 679–80. In many cases, the considerable effort in fashioning a detailed verbal description does not contribute enough to the infringement analysis to justify the endeavor. See id. at 680. Depictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings." Slip Op. at 9-10.


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