USPTO
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| May 8, 2017
The U.S. Patent and Trademark Office (USPTO) held its 11th annual Design Day on April 25, 2017.  Andrew Hirshfeld, Commissioner for Patents, again kicked off this year's presentations with a welcome address and highlights.  Commissioner Hirshfeld also introduced Karen Young, Technology Center (TC) 2900's new director, who took over TC 2900 upon the retirement of former TC 2900 Director Robert Olszewski.

Director Young took the opportunity to introduce herself to the design patent community in attendance and wish former TC 2900 Director Robert Olszewski well in retirement.  Director Young then discussed the state of TC 2900, including statistical breakdowns of various metrics such as number of design patent application filings, backlog, pendency, and workforce, and a showcase of the design examiners in the Silicon Valley and Detroit satellite offices. 

David Gerk, Attorney-Advisor for the USPTO's Office of Policy and International Affairs, followed Director Young and discussed developments in international design protection.  Among other topics, Mr. Gerk discussed trends and developments in the Hague Agreement; various online resources pertaining to the Hague Agreement (e.g., Hague Express Database, USPTO, WIPO); topics from a recent meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) surrounding graphical user interfaces (GUIs)/icons/typeface; and ongoing projects for the Industrial Design 5 Forum (ID5) (ID5, generally speaking, is a forum focusing on "improving consistency in registration policies, cataloging office practices, promoting interoperable procedural frameworks, and protecting emerging designs such as graphical user interfaces (GUIs), animations and other new technology designs.").

Next, Todd Hunter, Director Copyright and Industrial Design Branch of the Canadian Intellectual Property Office (CIPO), provided statistics relating to industrial design application filings in Canada and discussed similarities/differences between industrial design practice in Canada and design patent practice in the United States.

Richard Stockton next presented on the topic of seeking early dismissal in design patent litigations.

The final discussion before the lunch break involved a panel of design examiners and design practioners discussing design patent prosecution best practices.  Notable issues addressed by the panel included why a preliminary amendment (PA) might be filed when filing a design patent application, objections/rejections based on broad titles and possible ways to prevent or overcome such objections/rejections, how to disclaim aspects of a photographic image, and appendices filed with design patent applications.    

The next presentation, after the lunch break, was given by Matthew Zacherle and Thomas Boshinski of WestRock Company, indicated to be the second largest paper packing company in the world. This presentation gave us a peek into the design process (from Mr. Zacherle, Senior Designer for WestRock) and some of the legal issues of working with designers (from Mr. Boshinski, Senior Counsel for WestRock).

The next presentation also focused on the interaction between industrial designers and intellectual property protection. Specifically, this presentation was a panel that explored how the fashion industry uses intellectual property to protect fashion designs, which can change and evolve very rapidly. Several of the presenters noted that fashion designers and fashion brands are investing in design patents.

After a short break, the presentations resumed with a mock argument that explored how prosecution can affect in claim interpretation and enforcement of design rights. The mock arguments were very well done and solicited quite a few laughs from the audience. However, the underlying message was serious; in each case, a seemingly inconsequential event during prosecution resulted in a judgement that was counter to the result that the audience expected. The takeaway was to always be thinking of how the decisions made in prosecuting a design application could affect future enforcement of the corresponding design patent.

The final presentation for Design Day 2017 was a summary of recent decisions by Joseph Anderson. Mr. Anderson provided an overview of decisions involving design patents from the Court of Appeals for the Federal Circuit and district courts, as well as the Patent Trial and Appeals Board.
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| 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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| 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 approach for 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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| November 18, 2015
The U.S. Patent and Trademark Office (USPTO) and the Patent Public Advisory Committee (PPAC) are holding a public hearing on November 19, 2015 regarding proposed patent fees (a link to the Federal Register Notice is provided here). The meeting will take place from 2:00 p.m. to 4:00 p.m. (EST) at the USPTO Madison Auditorium South, 600 Dulany Street, Alexandria, Virginia 22314.

Proposed fee adjustments specific to U.S. design patent applications, include the following:

  • Filing fee: increase $20 (to $200);
  • Search fee: increase $40 (to $160);
  • Examination fee: increase $140 (to $600); and
  • Issue Fee: increase $440 (to $1000).

 

The fees above, which are for a large entity, represent a total increase of $640, constitute a substantial fee increase for design patent applications as compared to the current fees. 

The proposed fee adjustments also include fees related to international design applications.

Tables containing all of the USPTO's proposed fee adjustments are located at the following URL: http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting

The USPTO will make available online a webcast and transcript of the hearing at the above URL after the hearing. 


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| 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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| April 16, 2015
On April 14, 2015, the U.S. Court of Appeals for the Federal Circuit ("CAFC") affirmed the Patent Trial and Appeal Board’s decision that Luv N' Care's U.S. Patent Number D617,465 ("the '465 patent") was unpatentable. The PTAB’s decision was the first inter partes review initiated by the USPTO for a design patent. The CAFC issued a Rule 36 judgment that affirmed this decision without opinion.  For reference, Figures 2 and 3 from the '465 patent are provided below.   
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| April 2, 2015
On April 2, 2015, the U.S. Patent and Trademark Office ("USPTO") published its Final Rule on Changes to Implement the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement").  80 F.R. 63, pp. 17918-17971.  These changes go into effect on May 13, 2015.  Some of the changes only apply to patent applications filed on or after September 16, 2012 (e.g., power of attorney, application by assignee, inventor’s oath/declaration, and application data sheet).  Other changes only apply to patent applications filed on or after December 18, 2013 (e.g., continuing applications and filing of a certified copy of a previously-filed application).
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By author; ?>
| November 11, 2014
The U.S. Patent and Trademark Office (“USPTO”) recently updated its public and private Patent Application Information Retrieval (“PAIR”) graphical user interfaces to provide access to information regarding design applications filed pursuant to the Hague Agreement.  Such information will not be available, however, until entry into force of the Hague Agreement with respect to the U.S., which will occur three months after the U.S. deposits its instrument of ratification with the International Bureau of the World Intellectual Property Organization (“WIPO”), unless that instrument specifies a later date.

Generally speaking, the Hague Agreement establishes an international registration system which facilitates protection of industrial designs (i.e., design patents) in member countries and intergovernmental organizations (“Contracting Parties”) by way of a single, “standardized” international design application filed either directly with the International Bureau of WIPO or indirectly through an applicant’s Contracting Party.
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| May 1, 2014
On April 21, 2014 the USPTO’s Patent Trial and Appeal Board issued a final written decision in Munchkin Inc. et al. v. Luv N’ Care Ltd. (IPR2013-00072), the inter partes review of Luv N’ Care Ltd.’s design patent for a baby drinking cup.

The PTAB found Luv N’ Care Ltd.’s D 617,465 patent (the ’465 patent) unpatentable. This is the first time that the USPTO has invalidated a design patent under a post-grant review process created by the America Invents Act.

The ‘465 patent claims a drinking cup. Figures 2 and 3 are reproduced below.



In January 2012, Luv N’ Care filed an infringement suit for the ’465 patent in the Southern District of New York, against Toys R Us and Munchkin (NYSD-2-12-cv-00228).

In the complaint, Luv N’ Care stated that it had “generated hundreds of millions of dollars in revenue from the sale of goods under their trademarks and trade dress,” and that a series of competitors had allegedly “all deliberately copied [Luv N’ Care’s] designs, to illegally profit from them.”

Luv N’ Care sued the Defendants on counts of alleged infringement, trade dress infringement and unfair competition, federal trademark dilution, unfair competition under New York law, violation of New York general business law, and contributory infringement.

The ‘465 patent was also involved in the Luv N’ Care Ltd v. Regent Baby Products Corp, 10-9492 (S.D.N.Y filed Dec. 21, 2010), and Luv N’ Care Ltd v. Royal King Infant Prod’s Co. Ltd, 10-cv-00461 (E.D. Tex. Filed Nov. 4, 2010). Luv N’ Care settled with Royal King Infant Prod’s Co. Ltd, with Royal King agreeing to cease and desist from manufacture and sales of products likely to cause confusion.

In December 2012, Toys R Us and Munchkin (‘the Petitioners’) filed a petition for inter partes review, alleging that the ’465 patent was obvious in view of two references, US 2007/0221604 (the ’604 reference) and US 6,994,225 (the ’225 reference). This was the first inter partes review initiated by the USPTO for a design patent. 

The Patent and Trials Appeal Board (PTAB) determined that there was reasonable likelihood that the claim of the ‘465 patent would have been obvious over each of the ‘225 and ‘604 reference, and granted the petition for review.

First, Luv N’ Care argued that its ‘465 patent was entitled to an earlier effective filing date of US Application No. 10/536,106 (the ‘106 application), thereby disqualifying the ‘225 and ‘604 references. In response, the Petitioners argued that the ‘106 application lacked written description support for the ‘465 patent, based on differences in the spout.

Figures from both the ‘465 patent and the ‘106 application are shown below, as reproduced from the PTAB’s final written decision:



In its written decision, the PTAB stated the following differences “(1) the outer boundary of the spout tip of the claimed design is larger than that of the ‘106 application. … (2) the spout tip of the claimed design has a different, more rounded, oval shape than that of the racetrack shape of the spout tip in the ‘106 application; and (3) the spout tip of the claimed design has three concentric rings that the ‘106 application does not disclose.”

The PTAB further noted that although the ‘106 application stated that an oval or other shape may be used for the spout, the ‘106 application did not “identify the specific shape of the spout in the claimed design, or otherwise reasonably convey to those skilled in the art that the inventor had possession of the claimed design.” Accordingly the PTAB concluded that the ‘465 patent was not entitled to the filing date of the ‘106 application. The written decision notes that counsel for Luv N’ Care conceded that the claim was not patentable if denied the benefit of the filing date.

Second, Luv N’ Care submitted a motion to amend the patent. As reiterated by the PTAB, a motion to amend the patent must be responsive to a ground of unpatentability at issue in the trial, and it may not enlarge the scope of the claims, or introduce new matter. The patent owner bears the burden to establish that it is entitled to the relief requested by its motion to amend.

The amendment proposed by Luv N’ Care is shown in part below for Figure 3:



The PTAB stated that the “spout tip (left of center in each drawing above) is egg-shaped in the issued claim, whereas it is racetrack-shaped in the proposed amended claim. Additionally, the spout tip of the issued claim includes three concentric rings, whereas that of the proposed amended claim includes only two concentric rings.”

In its written decision, the PTAB stated that Luv N’ Care effectively argued that the proposed amended claim “is not broader than the issued claim because to ‘an ordinary observer,’ the designs are ‘substantially the same.’” However, the PTAB stated that it was not “aware of any authority that has applied the ‘ordinary observer’ test … to compare the scope of two claims.” The PTAB further noted that “the proposed amended claim is broader than the issued claim because it is broader with respect to racetrack-shaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims.”

The PTAB held that the Petitioners had “shown by a preponderance of evidence that the sole claim of the ‘465 patent is unpatentable, and [Luv N’ Care] has not met its burden of proof on the motion to amend.”


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By author; ?>
| April 15, 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.


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