The 7th annual Design Day took place on April 23, at the USPTO. In attendance were about 80 USPTO employees, and roughly 200 exterior stakeholders. Robert Spear, Supervisory Patent Examiner for Technology Center 2900 ("TC 2900"), was the Master of Ceremonies. The theme for Design Day 2013 was “Designs in the New Digital Age.”
To start the day, Margaret Focarino, Commissioner for Patents at the USPTO, gave an overview of the goals for TC 2900. She noted that for the second year in a row, the focus for TC 2900 was on eliminating the case backlog for filings prior to October 2011. Progress was acknowledged. With this goal in mind, and an increase in design filings, Ms. Focarino indicated that Examiners may be added to TC 2900.
Next, the Director of TC 2900, Robert Olszewski, gave a presentation on the State of TC 2900, focusing on personnel. Mr. Olszewski indicated that of the 102 Examiners in TC 2900, 76 were Primary Examiners, showing that Design Examiners are progressing. In addition, 56 Examiners are telecommuting, making TC 2900 the art unit with the highest telecommuting percentage.
Joel Sincavage, Design Practice Specialist of TC 2900, presented “More About the Written Description Requirement of 35 U.S.C. § 112(a).” Mr. Sincavage provided several examples of design cases comprising both original and amended drawings, where an amendment was enabled in the original drawings, but not described. For instance, an example consisted of a baby bottle holder with two handles, in solid lines in the original drawing, but later amended to include one handle in solid lines, and the second handle in shadow lines. Mr. Sincavage indicated that in such cases careful examination would be required to determine, on a case by case basis, whether the written description requirement was met. A spirited discussion ensued, and Mr. Sincavage noted that he would report elements of the discussion to the USPTO legal affairs department for further discussion.
Following a break, David Gerk, Patent Attorney at the Office of Policy and External Affairs, and Darrell Mottley, Shareholder at Banner & Witcoff, presented on the U.S. implementation of the Hague Agreement. Mr. Gerk reviewed the procedure for filing an application under the Hague Agreement, noting that while all applications, direct or indirect, would be initially reviewed by the International Bureau, substantive examination would be carried out by the contracting party. Thus, while 100 embodiments may be filed in one application under the Hague Agreement, the USPTO would remain consistent with its restriction practice. Mr. Mottley addressed several implementation issues currently being discussed between WIPO and the PTO, noting WIPO’s willingness to work to synchronize the U.S. system with the Hague. For example, WIPO currently lacks the ability to file disclosures, oaths or declarations. WIPO also does not provide e-notification of rejections, which could leave Applicants with a short time period to respond. Mr. Mottley noted that a decision to file under the Hague would likely be based on multiple considerations such as secrecy, speed of examination, and a country’s specific IP strategy. In response to questions, Mr. Gerk indicated that a rule packet was being prepared. He also noted that Japan, Korea and China were in discussions with WIPO to become parties to the Hague Agreement.
Masashi Omine, Deputy Director of the Design Policy Section at the Japanese Patent Office presented an “Outline of the Design System in the JPO, History, and Recent Developments in GUI practice before the JPO”. Mr. Omine reviewed elements of Japanese design applications, and gave a brief overview of changes in the JPO Design Examination Guidelines from 1986 to 2011, implemented to better protect GUIs. Mr. Omine stated that a Design System Subcommittee at the JPO is investigating a possible entry into the Hague Agreement.
To conclude the morning’s presentation, Tracy-Gene Durkin, Director of Sterne Kessler Goldstein & Fox P.L.L.C, presented “Design Patents in Reexamination: A Look Back at the Last Ten Years and at the Future.” Ms. Durkin noted that between 2005 and 2010 Design Patents constituted 2% of Ex Parte reexams, and 1% of Inter Partes reexams. She indicated that with the AIA increasing the amount of qualifying prior art, the number of design patent post grant proceedings may increase.
The afternoon sessions of Design Day 2013 began with a joint presentation focusing on protecting GUI designs by Andrew Sanders from Microsoft and Robert Katz of Banner & Witcoff. Mr. Sanders discussed certain Microsoft products and related design patent filings. Mr. Sanders noted that his company is seeking to protect animation and gave a Snap animation demo. Lastly, Mr. Sanders explained that design patent protection is important to his company, and often is used in situations that do not end up in the news. Mr. Katz’ portion of the presentation focused on capturing and protecting the user experience.
The next presentation was by Charles Mauro of Mauro New Media. Mr. Mauro gave a presentation on The Increasing Importance of GUI in the Digital Age. Mr. Mauro’s presentation included a history of GUI and future implementations. Mr. Mauro also discussed modern design and the problem with protecting those designs with the intellectual property rights that are currently available.
Cathron Brooks, a SPE in TC2900, gave a presentation titled Overview of USPTO Examination Practice for Icon and Graphical User Interface Applications. The presentation by Ms. Brooks outlined the procedures that design patent examiners go through to search for GUI and icon applications. Ms. Brooks noted that there are currently 11 primary examiners that examine GUI and icon applications that that these examiners work as a team and have regular meetings to discuss examination procedures.
A question and answer session with the afternoon’s presenters followed. Of interest to practitioners, Joel Sincavage stated that the publications department has an agreement to use SCORE drawings when available, regardless of whether the Examiner has asked them to or not.
The final presentation of the day was given by Elizabeth Ferrill of Finnegan, Henderson, Farabow, Garrett & Dunner. Ms. Ferrill gave an overview of the design patent judicial decisions from the last year. This overview included a discussion on the Apple v. Samsung litigation. Ms. Ferrill then discussed several Federal Circuit and district court cases that involve design patents.
The various discussions during Design Day 2013 were interesting, sometimes heated, and very informative. They certainly emphasize that U.S. design patent practice is constantly changing and the increasing importance of design patents. Please check our blog frequently for the latest updates.
Colin B. Harris <CHarris@oblon.com>
Anne-Raphaelle Aubry <AAubry@oblon.com>