Prosecution

Expedited Examination of a Design Patent Application

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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IP Chat Channel - Design Patent Prosecution: Advanced Topics

June 10, 2013
On May 23, 2013, the IPO held a webinar on its IP Chat Channel called "Design Patent Prosecution: Advanced Topics," hosted by Pamela Sherrid.

Katie Maksym, design patent manager for Nike, Inc. first presented "Best Practice Tips from the Field of Play." Ms. Maksym highlighted the role of infringement awareness as a source of information to draft claims.
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Design Day 2015

April 17, 2015
The U.S. Patent and Trademark Office (USPTO) held its 9th annual Design Day on April 14, 2015. 

The day started off with the Commissioner for Patents, Margaret (Peggy) Focarino, welcoming everyone to Design Day. Commissioner Focarino commented how much Design Day has grown over the last nine years, from a small conference room nine years ago to filling up the entire Madison Auditorium today.

Next, the Director of Design Technology Center TC 2900, Robert Olszewski, spoke about the growth of the Design Technology Center and shared statistical data regarding the Center. In particular, the Design staff now has 9 Supervisor Patent Examiners, with a plan to hire 3 more, along with creating two new art units. Additionally, there are currently 143 Examiners, and the Center plans on hiring 30 more. The average amount of time to a 1st Action is currently 13.8 months, and the average amount of time until issue is 17.3 months. Mr. Olszewski said that the Center's goal is to reduce the pendency; he also spoke about an initiative in the Center to issue an Office Action on all old cases.

Garth Rademaker, a Supervisor Patent Examiner in TC 2900, and the lead on examiner training, spoke about training in the TC. According to Mr. Rademaker, since design patents are so different from utility patents, training happens in the TC rather than Patent Training Academy, preferably on a one-on-one basis. With the hire of so many new examiners recently and 30 more examiners coming in, productivity of experienced examiners will likely be down as the new examiners are trained.

David Gerk, a patent attorney in the USPTO's Office of Pilicy and Internatinal Affairs, spoke briefly about Hague Agreement highlights. Specifically, that the Hague Agreement will take effect in the U.S. on May 13, 2015 and filings can be done directly through WIPO or indirectly through the USPTO if the USPTO is the Applicant's contracting party.

Following David Gerk’s presentation regarding Hague Agreement highlights, the next session delved into certain aspects of the highlights. Notably, the presenters discussed the following aspects: (1) the USPTO has its own dedicated “Hague” webpage, (2) the USPTO does not have its own Hague-specific filing form, so the WIPO forms must be used (updated forms will be posted on May 13, 2015); (3) the country(ies) and fees must be designated/paid at the time of filing; (4) a petition to accept color drawings is not necessary; (5) up to 100 designs may be filed for designs in the same Locarno class; (6) Hague-based design applications will be published (typically within 6 months unless early publication is requested); (7) the file history is made publicly available for an unpublished U.S. application claiming priority to, incorporating by reference, or otherwise identifying a published Hague-based design application; (8) CPAs are not available, so it is necessary to file a continuation or divisional; and (9) provisional rights are available based on publication, except a continuation or divisional application does not receive provisional rights based on the parent’s publication.  See also our previous post here regarding the Final Rules on Changes to Implement the Hague Agreement Concerning Industrial Designs.       

Sachiko Chiba, an Examiner of Household Equipment Design Division of the Japan Patent Office, traveled to Design Day to present on “Effective Utilization of the Design System in Japan.” Ms. Chiba’s presentation covered damages caused by counterfeit products, utilizing design rights and product design by companies, and design strategy and types of utilization of industrial design rights.

Just prior to lunch, a panel comprised of practitioners, draftspersons, and a USPTO representative discussed design drawing requirements and best practices for preparing design-quality drawings. Among other things, the panelists emphasized the importance of communication between practitioners and draftspersons and of providing a sufficient number of views to adequately represent the claimed design. The panelists also discussed advantages and disadvantages of including a specific color in design drawings versus including the USPTO’s “standard” pattern representation for a color and providing specific color tones or color tone ranges in the specification.

After lunch Robert Brunner (Founder/Partner of Ammunition Group) gave an entertaining keynote address entitled “Being Design Driven.” The address highlighted a number of products designed by Mr. Brunner and his company (including the Leeo smart nightlight, Beats headphones, Square credit card readers, Lyft mustache, and Polaroid cube camera) and the importance of design in the marketplace. Mr. Brunner explained that design provides an organization’s interface to the outside world and helps define who an organization is. He advised that companies should not think of design as merely one stage in product development, but as part of the conversation at every stage of product development.

After Robert Brunner’s presentation, Glen Alexrod spoke about the experience of his company, Nylabone®, and the use of Design patents. Mr. Alexrod noted he only has an average of half a second to get the attention of a customer while they walk the aisles of a pet store. Design patents help his company get the attention of customers in order to make a sale.

A panel of design experts moderated by Charles Mauro (President/Founder of MaruoNewMedia) commented on how changes in the law have impacted design experts. Cooper Woodring argued that the approach of factoring out functional features in Richardson v. Stanley Works was troubling because (1) the patent examiner examined the entire design and (2) because the entire design must always be considered in validity and infringement analyses. He suggested that there may not be any designs that should be invalid as functional. Given that a design should not be invalid as functional if the same function can be accomplished by alternative designs, he proposed that patent owners in litigation could use a strategy of creating real alternative designs (if none are readily available) to defend against charges of invalidity based on functionality.

Ronald Kemnitzer (Professor Emeritus at Virginia Tech) addressed the hypothetical “designer of ordinary skill who designs articles of the type involved” in an obviousness analysis. He argued that there have been major changes in the real world of design between 1985 and 2015 that affect who should be considered a designer of ordinary skill. Thirty years ago there were 6,000 designers who were generally found in corporate design departments and these were mostly white men. Today, there are 40,000 designers of much more diverse background who are evenly split between corporations and consulting. Given the broad training received by current designers, the advent of computers, and the fact that most designers work in multiple product disciplines, Dr. Kemnitzer argued that a design expert should be competent to offer expert opinions on obviousness even if they have never designed an article of the particular type involved in the litigation.

Next, Peter Bressler (PBressler LLC) discussed confusion that arises given the verbal focus of the case law and the visual focus of design patents. Legal concepts in design patent law such as “functionality,” “designer of ordinary skill,” “ordinary observer,” and “substantially the same” are all fraught with difficulty. Because these definitions are unclear, courts and parties are forced to spend time arguing about what the definitions mean rather than focusing on the merits of the case. For this reason, he believed a broader consensus on the legal definitions used in design patent law is needed. He further argued that while the Apple v. Samsung case has increased the value of design patents at present, if the Federal Circuit overturns the 35 USC 289 standard for design patent damages awards, the value of design patents could be substantially diminished.

The final presentation of the day was given by George Raynal (Saidman DesignLaw Group LLC). Mr. Raynal provided an entertaining overview of recent decisions involving design patents. He pointed out the contrasting approaches used by district courts in deciding claim construction as well as validity and infringement. This included a review of when courts did or did not elect to provide a written claim construction as opposed to relying only on the drawings, the relevance of the prior art in an infringement analysis, the significance of the drawings, the relevance of the prosecution history (including titles), etc. He provided statistics indicating that over the past year in published decisions patent owners had an even chance of prevailing on validity, but had a tough time prevailing on infringement. Mr. Raynal also noted that there were currently 6 pending cases involving design patents at the U.S. Court of Appeals for the Federal Circuit (CAFC). However, as one audience member noted, the CAFC issued Rule 36 opinions for two of those cases during Design Day. Stay tuned for blog posts on those cases.
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USPTO Publishes Request for Comments on (and Examples Addressing) the Application of the Written Description Requirement to Specific Situations in Design Applications

April 15, 2016
On April 15, 2016, the U.S. Patent and Trademark Office (“USPTO”) published a Request for Comments on the Application of the Written Description Requirement to Specific Situations in Design Applications (“Request”). See 81 F.R. 73, pp. 22233-22236. In particular, the USPTO is seeking the public’s help in identifying examples “to illustrate [its] proposed approach or any suggested approachfor applying the written description requirement in design applications.” Id. (emphasis added).

Importantly, this Request also points out that “it became clear that there exists a need to supplement the current provisions in the Manual of Patent Examining Procedure (‘‘MPEP’’) relating to 35 U.S.C. 112 for design applications.” Id. (Stop the press! Does the Request really say that? Yes, yes it does. Please read on….)
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Recap of USPTO's Design Day 2016

April 26, 2016
The USPTO's Design Day 2016, held April 19th, started off with a welcoming address from the Commissioner for Patents, Andrew Hirshfeld. Commissioner Hirshfeld noted the increasing importance of design patents, as U.S. design patent application filings have increased from 11,000 in 1987 to 37,000 in 2015. Commissioner Hirschfeld encouraged everyone to submit comments and examples for the application of the Written Description Requirement in Design Applications, which was published on April 15, 2016 (reported here). Commissioner Hirshfeld also announced that 15 design examiners will be working out of the USPTO's San Jose satellite office.
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Recap of USPTO's Design Day 2018

May 4, 2018
The U.S. Patent and Trademark Office (USPTO) held its 12th annual Design Day on April 25, 2018. 

9:00-9:15 - "Welcome and Kick-off" - Andrei Iancu, the new Director of the USPTO, kicked off this year's event with a welcome address.
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“Cover Up What You Don’t Want to See”: Advantek Marketing v. Shanghai Walk-Long Tools (Fed. Cir., Aug. 1, 2018)

August 10, 2018
Advantek obtained U.S. Design Patent No. D715,006(“D ’006”) on a “gazebo” without a cover, the gazebo essentially being a portable kennel. Figs. 1 and 2 from D ’006 are reproduced below.
Gazebo Image 1
During prosecution of the application that later became D ’006, the Examiner issued a Restriction Requirement. The Requirement split the application into two groups: a gazebo without a cover, and a gazebo with a cover. According to the Examiner, the “designs as grouped are distinct from each other….” Despite disagreeing with the Requirement, Advantek elected to prosecute the “gazebo without a cover” (as shown above) and cancelled a drawing that showed the gazebo with a cover. After further prosecution to overcome formalities objections and § 112 rejections, the D ’006 patent issued.
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Copyright © Oblon, McClelland, Maier & Neustadt, L.L.P. | Disclaimer
The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important design patent issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.