Entries in USPTO (15)


Design Day 2014

Celia Murphy, Supervisory Patent Examiner for technology Center 2900 (‘TC 2900’) was the host for Design Day 2014, the 8th Annual Design Day.  Design Day 2014 appeared to have a significant increase in participants as the USPTO Madison Auditorium had only a few empty seats throughout the day.

Andy Faile, Deputy Commission for Patent Operations started the day off by highlighting two initiatives by the USPTO: interview practice, and a technical training program. Mr. Faile noted that a growing number of interviews were being conducted, benefiting examiners and practitioners alike, and that the number of requests for WebEx interviews was also increasing.

Regarding the technical training program, Mr. Faile invited interested outside parties to come to the USPTO to provide instructions for Examiners on the state of the art. Finally, Mr. Faile commented on the increase in annual design filings, which have roughly tripled between 1992 and 2013.

Following the welcoming remarks, Robert Olszewski, Director of Technology Center 2900 reported on the State of the Design Technology Center. Mr. Olszewski indicated that while TC 2900 is still the smallest technology center, it is expanding. TC 2900 currently employs 120 Patent Examiners, a number which is expected to grow to 150 by the end of 2014. This is part of an effort to catch up with a backlog which has led 1st Office Action pendency to increase from 8.5 months in 2010 to 10.7 months in 2013.

As on Design Day 2013, David R. Gerk, Patent Attorney at the USPTO Office of Policy and International Affairs, reported on the implementation of the Hague agreement. Mr. Gerk first provided a brief overview of the Hague system, which provides for the centralized acquisition and maintenance of industrial designs.

Mr. Gerk noted that the Republic of Korea will become a member of the Hague agreement on July 1st 2014, and that China, Japan, Russia and Canada are actively pursuing membership. Mr. Gerk then proceeded to debunk some Hague agreement ‘myths.’ In particular, he noted that the United States is not currently a member, and will become one no sooner than 3 months from the date the U.S. deposits its instrument of ratification with WIPO.

With respect to drawings, Mr. Gerk indicated that drawings will indeed be reviewed by WIPO and by the local offices.  Therefore, Applicants will still need to comply with U.S. drawing requirements should they wish to pursue a U.S. Design Patent.

Finally, Mr. Gerk noted that 100 designs, described by 100 or more drawings, may be filed in a single Hague application, and the International Bureau may issue a single international registration. However, if the United States is designated as a contracting party, the USPTO will issue a restriction requirement where appropriate.

Following a break, Jihoon Kim, Deputy Director of the Design Examination Policy Division for the Korean Intellectual Property Office (KIPO) gave an informative presentation on recent changes in GUI design applications at KIPO, which we previously discussed in more detail.

Joel Sincavage, Design Practice Specialist of TC 2900, presented a summary of the USPTO roundtable on the written description requirement for design patent applications and updated the audience as to the USPTO's progress with implementing policies and procedures.  We previously commented on the USPTO's request for comments, the roundtable, and the IPO and AIPLA submitted comments.

Mr. Sincavage prompted controversy at Design Day 2013 with respect to the written description requirement and this controversy still continues.  However, Mr. Sincavage did indicate that the proposed factors that were the subject of the roundtable will not be further pursued.

Instead, Mr. Sincavage indicated the USPTO would adopt policies that were consistent with Federal Circuit decisions; that it was not practical to include a written explanation in design patent applications; and that the USPTO will provide clear examples for the public and examiners.  Although not specified during Design Day 2014, subsequent discussions with Mr. Sincavage and USPTO personnel indicated the USPTO would publicly propose rules/examples for review and comment prior to issuing final guidance.

The last presentation before the lunch break covered design patents in post-grant proceedings. Elizabeth Farrill of Finnegan LLP moderated a discussion with Administrative Patent Judges Trenton Ward and Jennifer Bisk, and Damon Neagle of Design IP.  Judge Ward provided an overview of post-grant proceedings, identifying the 8 design IPRs filed thus far, and the 4 instituted.  The IPR cases numbers are IPR2013-00072 (Final Decision on April 21, 2014 - not patentable), IPR2013-00259 (not instituted), IPR2013-00500 (instituted), IPR2013-00501 (instituted), IPR2013-00580 (instituted), IPR2014-00071 (not instituted), IPR2014-00542 (pending), and IPR2014-00555 (pending). The cases can be accessed at the USPTO PTAB website.

Damon Nagel provided a brief explanation of his IPR (IPR2013-00259 - ATAS v. Centria), and commented on the application of a Rosen reference.  Specifically, Mr. Nagel was concerned that an experienced examiner may apply a very strict Rosen-based test in relying on a primary reference, where a court (e.g., a District Court) may apply a lower standard of review.  Mr. Nagel also discussed some of the apparent deficiencies in his IPR, which was not instituted, including the decision to not utilize an expert due to budget concerns.

Judge Ward reminded petitioners to provide a detailed analysis for a limited number of challenges, rather than identify many challenges, and support conclusions with sound, complete legal analysis, with pinpoint citations to evidentiary support.  Judge Bisk reminded petitioners they don't get much of a chance to do anything after the IPR is initiated, and stated Petitioner merely gets to respond to a Patent Office response - the petition is the entire case - use the best arguments and the best evidence.

Ms. Farrill suggested using color in the petition, as the APJs can see the color when filed, and Mr. Nagel suggested the use of an expert, with caution from APJs Ward and Bisk that expert opinions should be used on factual issues and should not echo attorney arguments.

Michael Jacobs began the post-lunch portion of Design Day 2014 with a presentation on litigating design patent cases.  Mr. Jacobs brought the perspective of someone who was relatively unfamiliar with design patent litigation prior to severing as co-lead counsel in a high-profile smartphone case that included design patents.  Mr. Jacobs highlighted some of the seemingly contradictory instructions judges have been given regarding verbally construing a design patent claim as well as the difficultly jurors face in having to view the evidence from the perspective of an ordinary designer for some arguments and as an ordinary observer for others.

Charles Mauro of Mauro New Media and Elizabeth Ferrill of Finnegan LLP gave the next presentation, which focused on new cutting edge technology and the significant protection issues that are being raised.  Mr. Mauro began with a discussion of cutting edge technology, including personal communication devices, personal robots, and self-driving cars, that was only found is science fiction in the not too distant past.  Ms. Ferrill then stepped through some difficulties raised by trying to protect this new technology with design patents.  Mr. Mauro concluded this presentation with a discussion of what he believes will be the next evolution of cutting edge technology.

Martha Moore, Rachael Brown, and Katie Maksym provided an exciting and passionate discussion on how they "Just Do It" at Nike.  The presentation included a background of Nike's business by Ms. Maksym and some of Nike's history, development, and involvement in sports and athletes by Ms. Moore, highlighting Nike's design achievements together with a few failures.  Ms. Brown provided an overview of how Nike captures design IP, including coordinating IP procurements services in Trademark, Patents, and Copyrights.  Erik Maurer of Banner & Witcoff, Ltd. described some of the enforcement actions he has been involved with in representing Nike, including cease and design letters, lawsuits, seizure by U.S. Marshalls, and dealing with repeat offenders.

Margaret Polson of Oppedahl Patent Law Firm LLC provided a case law update concerning designs.  Many of the cases discussed by Ms. Polson have been previously discussed here, including In re Owens, Keurig v. Rogers, Pacific Coast v. Malibu Boats, High Point v. Buyers Direct, and also mentioned the above-noted design IPRs.  Ms. Polson also discussed several other cases, including Z Produx v. Make-up Art Cosmetics, Ethicon v. Covidien, McIntire v. Sunrise Specialty, Sofpool v. Kmart, and MRC Innovations v. Hunter.

Our entire team contributed to the content of this post and attended various portions of Design Day 2014.


Written Description – Where do we go from here?

As previously reported, the USPTO published on February 6, 2014, a Request for Comments on the Written Description Requirements for Design Applications.  The Request followed a heated discussion during Design Day 2013 when USPTO Design Practice Specialist, Mr. Joel Sincavage gave specific examples illustrating an original design claim and an amended design claim where, in the amended claim, only a subset of elements of the original disclosure were shown using solid lines.

The USPTO seemed to take the position that, in these “rare situations,” the inventor may not have had possession of the newly claimed design because the claimed subset of elements was “seemingly unrelated” to the original design.  Some members of the public attending Design Day raised concerns regarding the Office’s position. 

In response to these concerns, the USPTO issued the Request for “comments on the application of the written description requirement where only a subset of elements of the original disclosure are shown using solid lines in an amendment or in a continuation application.” In its Request, the Office proposed the following factors to “only be applied by design examiners in the rare situation where there is a question as to whether an amended/continuation design claim satisfies the written description requirement:

(1) The presence of a common theme among the subset of elements forming the newly identified design claim, such as a common appearance;

(2) the subset of elements forming the newly identified design claim share an operational and/or visual connection due to the nature of the particular article of manufacture (e.g., set of tail lights of an automobile);

(3) the subset of elements forming the newly identified design claim is a self-contained design within the original design;

(4) a fundamental relationship among the subset of elements forming the newly identified design claim is established by the context in which the elements appear; and/or

(5) the subset of elements forming the newly identified design claim gives the same overall impression as the original design claim.”

A round-table was held by the Office on March 5, 2014, during which most members of the public voiced their opposition to the proposed guidelines and factors.  Criticisms included the non-compliance of the proposed guidelines with judicial precedent, the uncertainty created by the factors, and the potential loss of flexibility for all applicants while addressing “rare situations” where an applicant might be trying to game the system.

The window for comments closed on March 14, 2014.  Of note, The IPO and the AIPLA submitted comments strongly opposing the new guidelines and factors.

In its comments, the IPO advocates the status quo, relying on the 1989 en banc Federal Circuit decision in Racing Stroller.  In this case, the Court applied a simple visual test for determining compliance with the written description requirement.  If the claimed design is “depicted” in the earlier drawings, then the requirement is met. 

Nevertheless, the IPO considered a rule change to address the USPTO’s hypothetical checkered board scheme, where the original drawing is a grid of squares shown in solid lines and the amendments consist of selections of some of the squares forming designs such as a cross, an X, etc.  The IPO proposed the following test to address this rare and academic situation, which seems to concern the Office so much:

An amended design patent claim may not have written description support in the original disclosure when a designer of ordinary skill would not recognize any relationship between the claimed design and the original disclosure.

Of interest, the IPO proposal ties the test to a designer of ordinary skill in the art.  This connection should allow applicants to submit expert declarations in support of their position that the amendments are supported by the original disclosure.

The AIPLA also opposes the USPTO’s proposed factors.  The AIPLA points to the uncertainty created by these new factors and their inconsistent application by the Office.  The increase in the size and cost of preparing design applications as a result of this uncertainty is another stated reason for opposing the USPTO proposal. The AIPLA thus “urges the Office to adopt the following Examination guideline as an alternative to the factors suggested in the Request:

an amended claim that does not add subject matter to the original disclosure or remove subject matter claimed in the original disclosure satisfies the written description requirement unless the amended claim introduces a claimed element not “reasonably discernible” from the original disclosure.”

The AIPLA adds explanations regarding the meaning of adding and removing subject matter when changing solid lines to broken lines.  The Association also emphasizes several concerns about each of the factors proposed by the USPTO.

So, where do we go from here? 

The USPTO has agreed to review the comments submitted and may issue another Federal Register notice relating to the written restriction requirement.  In the meantime, Design Day 2014 will be here next week, and we may hear more on this topic from the USPTO on this occasion.  We will attend this annual event and report its highlights here on our blog.


Interim Rule Regarding Continued Prosecution Applications

The United States Patent and Trademark Office (Office) has adopted an interim rule, effective March 5, 2014, pertaining to Continued Prosecution Applications (CPAs), which are only available for design patent applications.

A CPA is typically filed when prosecution on the merits is closed in a design patent application.  For example, after the Examiner issues a final rejection in a design application, the Applicant may file a CPA in order to continue prosecution in front of the Examiner, instead of appealing the final rejection to the Patent Trial and Appeals Board.  A Request for Continued Examination (RCE) is not allowed in a design patent application.

The interim rule permits the filing of a CPA even if the prior design application does not contain the inventor's declaration if the CPA is filed on or after September 16, 2012, and the prior design application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

The Leahy-Smith America Invents Act (AIA) generally revised and streamlined the requirements for the inventor's declaration.  In implementing the AIA inventor’s declaration provisions, the Office provided that an applicant may postpone the filing of the inventor’s declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor.

However, the rules pertaining to CPAs still required that the prior design application of a CPA be complete, which required that the prior design application contain the inventor's declaration.  The interim rule eliminates this requirement for CPAs in order to align CPA practice with the general provisions of the AIA.  Under the new rules, applicants no longer need to file the inventor's declaration in a prior design application in order to file a CPA of that application.

As a side note, the Office found "good cause to adopt the changes in this interim rule without prior notice and an opportunity for public comment, as such procedures are contrary to the public interest."



On February 6, 2014, the USPTO published in 79 FR 7971

  1. a notice that it will be hosting a roundtable event on March 5, 2014, from 1:00 p.m. to 4:00 p.m.; and

  2. a request for written comments on the following topics for discussion at the roundtable event.  Registration is required to attend in-person or by webcast.  Requests for participation as a speaker must be made in writing by February 14, 2014.  The USPTO has also published additional information on its website.

The topics for written comments and discussion at the roundtable event include:

  1. Factors in Determining Whether an Amended/Continuation Design Claim Satisfies the Written Description Requirement; and
  2. Establishing Adequate Written Description Support in the Original Disclosure.

Specifically, the USPTO is seeking “comments on the application of the written description requirement where only a subset of elements of the original disclosure are shown using solid lines in an amendment or in a continuation application.” The request for comments derives from discussion during Design Day 2013.  Notably, however, the USPTO indicated that it “is not seeking comments on the issue of the introduction of boundary lines via amendment or in a continuation application, as addressed in In re Owens, 710 F.3d 1362 (Fed. Cir. 2013).”


IPO submits comments regarding Proposed Hague Rules

As previously reported, on November 29, 2013, 78 FR 71869 was published as a proposed rule to implement the Hague Agreement. 

On February 4, 2014, the Intellectual Property Owners Association (IPO) submitted comments on the proposed Hague rules.

In summary, the IPO comments are directed to:

  1. 37 CFR 1.53(d)(1)(ii) - continued prosecution application (CPA) practice in international design applications (IDAs); and
  2. the payment of fees for IDAs when filing through the USPTO (indirect filing).