By Colin B. Harris, Monica Yoon & Brian D. Fisher, Jr.
| 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.

9:15-9:30 - "State of the Design Technology Center" - Following Director Iancu, Karen Young, Director for TC2900, provided TC2900 statistical updates.  The updates included statistics showing an increase in the number of "regular" and Hague design patent application filings, allowance rates, and workforce data. 

9:30-10:00 - "Beyond the USPTO:  Design Developments Across the Globe" - Courtney Stopp, Attorney-Advisor Office of Policy and International Affairs, was the next presenter, presenting on the topic of design-related happenings outside the USPTO.  

10:00-10:30 - "JPO:  Design Drives Economic Growth" - The next presentation was given by Tomoki Sawai, the Director General of the Patent and Design Examination Department of the Japan Patent Office.  Mr. Sawai's presentation began with the thesis of design bridging innovation and branding and driving economic growth for companies.  After providing several representative companies, Mr. Sawai then discussed a number of themes his study group identified and analyzed, such as designs in culture and promotion of design management.   

10:45-11:45 - "Patent Prosecution Best Practices Panel:  Views from Examiners and Practitioners" - After the first break, a panel of design examiners and practioners discussed best practices for design patent prosecution.  Notable issues included preventing and overcoming title-related objections/rejections, common mistakes with figure descriptions in Hague applications, disclaiming aspects of photograph drawings, and submitting affidavits of attribution under 37 C.F.R. 1.130.

11:45-12:05 - "Report from the Front Line:  A Summary of Recent Decisions" - The final presentation before the lunch break involved a summary of recent decisions.  The presenter provided an overview of decisions involving design patents from the Court of Appeals for the Federal Circuit and U.S. district courts, but largely focusing on decisions involving the Patent Trial and Appeal Board (including ex parte appeals, IPRs, PGRs, and Supplemental Examinations).

1:00-1:30 - “Disrupting the $200B Convections-Industry with Unique Branding and Innovation” - Certainly one of the sweetest presentations of the day (with complementary gummy bears) was a presentation by Sugarfina highlighting both the thought and creativity that went into the company’s designs and the lengths that competitors will go to in order to appear similar. It was a very entertaining and educational presentation that left us hungry for more.

1:30-1:50 - “Report from the Front Line: Federal Circuit Decisions” - The theme of this presentation was that the audience would be left with more questions than answers, and presenter Alexis Simpson from Troutman Sanders delivered on that theme. Alexis briefly discussed Milo & Gabby LLC v., Inc. and Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Ltd. At the federal circuit, Milo & Gabby only pursued the “offer to sell” theory, and it was unclear why they dropped the “direct seller” argument against Amazon. Regarding Advantek Marketing, the court was able to look to the prosecution estoppel to determine that a product was an embodiment of a gazebo without a cover, rather than a component of the entire gazebo design. The takeaway here seems to be that the outcome may have been different had the claims been direct to a component of the entire design and/or if the prosecution history had clarified that it was a component of the entire design.

1:50-2:20 - “Design Exploration and Protection at Microsoft” - The next presentation by Qudus Olaniran detailed how Microsoft approaches designing their products and how they protect their products using design applications. Microsoft believes the first thing that draws a consumer in is the design of the product. They spend significant time and money perfecting their designs, and they equally invest in and rely on their design patent counsel to protect and enforce their designs. Interestingly, Microsoft’s design portfolio has grown to over 3800 design patents, and they have increased protection of screen related designs in addition to hardware.

2:20-2:50 - “Protecting Designs” - Michael Blankstein of Scientific Games discussed the evolution of their design portfolio and how they have been increasing protection of their designs due to the difficulty in pursuing and enforcing utility patents for the software side of their business. In the gambling space, the main battle is drawing customers to your machine when there are 100s or 1000s of similar machines. As a result, Scientific Games’ creative designs have significant value, as well as being a cost effective path to protection. From the company’s prospective, design patents have the lowest hurdle to cross to gain protection. Additionally, despite the relatively short 15 year protection term (compared to trade dress and copyright), the company feels that any competitor knocking them off 10 years later is already way behind.

3:05-3:35 - “LIVE ARTFULLY: Trends & Design Development at Kallista” - This was another presentation from those in industry. Specifically, Bill McKeone and Craig Loest from Koehler Co. gave the audience a look into how designs are developed at Koehler. Mr. McKeone, who is the Design Studio Manager at Kallista, explained the design process, including the tremendous amount of work that goes into the design before sketching of potential designs even begins. Mr. McKeone also explained how changes in the manufacturing process, including 3D printing, and technology are influencing design.

3:35-4:30 - “Panel: Enforcing Design Rights for Infringing Internet Sales” - Panel discussions are always among the most lively presentations at Design Day and this panel discussion was no different. In-house counsel from Newell Brands, Caterpillar Inc., Koehler Co., and Microsoft Corp. all discussed various ways in which design patents help protect their products. Additionally, the panelist described the difficulties associated with preventing copying and their various strategies for success.

4:30-4:50 - “Report from the Front Line: District Court Decisions” - The final presentation of the day was a whirlwind tour of the U.S. district courts where design patents are being litigated. It seems like there are some interesting cases being argued and 2018 is shaping up to be another eventful year in the design world. Stay tuned for more.