AIA

Filing of certified copies of priority documents: no change for design patent applicants

February 28, 2013
On March 16, 2013, the First-Inventor-To-File (FITF) provisions of the America Invents Act (AIA) will become effective.  In preparation for the new statute, the USPTO published its final rules on the FITF on February 14, 2013. 

In general, these final rules relate to the statutory changes to the definitions of novelty and prior art.  One of the changes is that a U.S. patent or a U.S. patent application publication has a prior art effect as of the filing date of the foreign priority application for the subject matter disclosed in the priority document.  In reaction to this change, new Rule 37 CFR 1.55(f) will require applicants to systematically file a certified copy of the foreign application, or an interim copy of the foreign application, within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. 
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Interim Rule Regarding Continued Prosecution Applications

March 10, 2014
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.
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Design Patent Litigations Chart Their Own Course

July 28, 2015
Design patent litigations have frequently been in the news the past few years, particularly since Apple and Samsung began battling against each other in the Northern District of California. With the America Invents Act (AIA) also affecting the number of utility patent cases that have been filed, we wondered whether the number of design patent litigations has increased or decreased over the past few years. While the statistics we reviewed indicate no clear trend, we suggest three conclusions that might be drawn from the statistics.
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Design Patents, PGR, and Functionality – the USPTO’s Sattler Decision

July 9, 2020
Design patents cover the ornamental design for articles of manufacture. Almost by definition, an article of manufacture is designed to perform a useful function. But if the design of an article of manufacture is dictated by its function, especially if there are no alternative designs available that perform the same function, the design patent may be invalid as lacking ornamentality under 35 USC § 171. As an aside, opinions and discussions use the terms “functionality” and “lacking ornamentality” interchangeably when discussing the 35 USC § 171 requirement for design patents. The U.S. Patent and Trademark Office (Patent Office) recently designated as Informative a decision instituting a post-grant review (PGR) proceeding on the issue of design patent functionality in Sattler Tech. Corp. v. Humancentric Ventures, LLC, PGR2019-00030, paper no. 9 (“Decision”).
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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.