By Colin B. Harris
| 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.

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 includes 12 Supervisor Patent Examiners, with one or two more being added soon. Additionally, TC2900 has 166 Examiners, with a plan to hire around 30 more Examiners by the end of the year. The average amount of time to a 1st Office Action is currently 13.7 months, and the average amount of time until issuance of a design application is 19.7 months, which is an increase from last year. Mr. Olszewski also discussed the current backlog of unexamined design applications, which is around 41,000, and the Technology Center’s plan to reduce the backlog. Mr. Olszewski also noted that an extra conversion of the figures was discovered in the publication process, which had resulted in poor printing quality for the figures in some design patents. This conversion has been eliminated, so the quality of figures issued in design patents should improve.

Following Mr. Olszewski’s talk, David Gerk from the USPTO’s Office of Policy and International Affairs discussed developments in international design protection. Notably, Mr. Gerk discussed non-U.S. jurisdictions’ practice of electronically receiving priority documents in design applications and the likelihood of the U.S. adopting such practice; Design View, a free centralized access point to search registered design information held by participating offices (presently 41, including the USPTO and WIPO); international protection for Graphical User Interfaces (GUIs) in various jurisdictions; New Industrial Design Framework (ID5) stakeholder involvement (Generally speaking, ID5 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”); and the upcoming meeting for the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). Setting the stage for the next speaker’s topic, Mr. Gerk also touched on the Hague Agreement, particularly the tremendous wealth of information provided on the USPTO’s website to assist Hague filings.

Following Mr. Gerk was Grégoire Bisson from The Hague Registry Brands and Design Sector at WIPO, who provided an update on the implementation of the Hague Agreement. Supporting a main takeaway from the discussion that the Hague Agreement represents a relatively simple, cost-effective, efficient and flexible approach by which to seek design protection, Mr. Bisson provided an overview of the Hague Agreement, discussed processes and ways to use the Hague Agreement, along with observations and tips gleaned from prior filed applications, and offered various statics regarding the number and nature of Hague Agreement-based design filings.

After the morning break, Bryce Rufener from Caterpillar Inc. presented an update on MPEP changes and implications. Notably, Mr. Rufener pointed out several apparent inconsistencies in the MPEP. One change of note to practitioners, which we reported here, is that for applications filed with color drawings it is no longer necessary to include a petition, 3 sets of the drawings, and a fee.

Next up for Design Day 2016 was a panel presentation titled “Views from Examiners and Practitioners.”  The panel discussion included some back and forth between the practitioners and Examiners over such issues as Information Disclosures Statements, objections to broken line statements, and the use of “may” versus “must” in Office Action requirements. This discussion seemed to help each side better understand why the other does certain things during prosecution.

Two presentations from industrial designers followed lunch. The first was given by Brian Kelleghan of Bison Designs. Mr. Kelleghan gave an overview of his varied career, which included securities trading, designing products for rock climbers, and making decorative carabiners. Mr. Kelleghan’s presentation was both inspirational and educational. After Mr. Kelleghan concluded, Daniel Martinage and Austen Angell from the Industrial Designers Society of America (IDSA) gave a presentation including an overview of IDSA and the importance of design in our world.

Switching gears, Mesmin Pierre, who is the Director of the Copyright and Industrial Design Branch of the Canadian Intellectual Property Office, gave a presentation on practice changes in Canada and Canada’s accession to the Hague System. Regarding the Hague System, Mr. Pierre noted that Canada is still “a few years away” and set a goal of accession by 2018.

1. Permissible Hindsight: a Retrospective on Classic Cases that Influenced Design Examination, Daniel Gajewski, Sterne Kessler.

Mr. Gajewski selected cases covering three main topics: new matter, obviousness, and color. For new matter, he provided examples of cases such as In re Salmon (round stool did not provide support for a square stool – CONFIRM) where new matter was found. In addressing obviousness, he reviewed the classic In re Rosen test and then discussed several cases where a particular piece of prior art was or was not considered close enough to be considered a primary reference as the first step in the analysis. In considering color, Mr. Gajewski reviewed cases addressing the broad concept that while color alone may not be a basis for patentability, it may play a role in determining patentability.

2. Apple v. Samsung at the Supreme Court: A Roadmap to Understanding the Issues, James Aquilina, Design IP, PC.

Mr. Aquilina provided a detailed review of the question being considered by the Supreme Court, namely, “Where a design patent is applied to only a component of a product, should an award of infringer's profits be limited to those profits attributable to the component?” Mr. Aquilina noted the origins of the current design patent damages statute, which arose specifically in response to a requirement from the 1800s to apportion damages that had been found unfair to design patent owners. Mr. Aquilina reviewed the arguments of the parties, explaining that Samsung’s arguments focus on the meaning of an “article of manufacture” and whether the current interpretation of 35 USC § 289 allows a double recovery, and Apple’s arguments focus on the plain language of the statute. Mr. Aquilina concluded that if Samsung prevails, it will likely have the effect of substantially decreasing the value of design patents.

3. Report from the Front Line (Recent case summary), William Seymour, Lando & Anastasi, LLP.

Mr. Seymour concluded Design Day 2016 with a detailed review of design patents decisions from the past 12 months. His review noted several cases where the issue of infringement turned on whether the accused product appeared to be closer to the closest prior art or to the patented design. He also noted a case where, perhaps counterintuitively, a narrower design having extensive detail was found to infringe despite differences with the prior art given overall similarities in the patented and accused designs. He further noted a case which raised, but did not answer, the question of subject matter eligibility there the design patent incorporated a design naturally found in nature. Several cases once again addressed the issue of functionality and found that the availability of alternative designs was significant in finding designs not invalid as primarily functional. Finally, Mr. Seymour concluded with an interesting review of the Trunki (a ridable suitcase) decision from the United Kingdom. There, the design was submitted as CAD file and on appeal the details in the CAD file ultimately contributed to a finding of non-infringement, leading to the recommendation to use line drawings in design patents rather than CAD files or photographs.