Design Patents: Controlling Pendency

Over the past decade, the PTO has taken control of pendency problems in the design patent area. In the early 1990’s design patents averaged over 30 months in prosecution. By 2001, that average pendency had fallen to less than 15 months.

The low pendency can allow design patents to serve as a preliminary substitute for future trade dress protection.  A design patent application offers immediate ‘patent pending’ status and would, in all likelihood, issue before the product would garner the secondary meaning sufficient for trade dress protection.  This is the approach taken by Apple with its iPod design patent applications. One of its issued iPod design patents (US D549,237 filed Aug 24 2005) appears identical to the company’s trademark design application (Serial No. 78925932 filed July 2006). The trademark case is still pending because Apple must make the required showing of secondary meaning.

The major problem with this ‘patent then trademark’ approach is the narrow scope generally offered by design patents during litigation. This may change as the Federal Circuit is set to reconsider its design patent infringement jurisprudence in the upcoming Egyptian Goddess en banc case.

There are major differences between the design patent examining corps and the utility patent examining corps — most notably, design patent examiners appear to stay-put. The 49 primary examiners associated with patents issued on December 4, 2007, have, on average, examined 3200+ design patents as primary examiners over an average of 12.5 years. (Medians of 3047 and 11.5 years respectively). Approximately 2/3 of design patents are prosecuted by one of the primary examiners without any assistance from an assistant examiner. For the same patents, assistant examiners have an average history of 400 examined design patents over a period of two years. (Median of 200 and 18 months respectively).

 * The graph above is based on a recently compiled dataset of the entire set of 300,000+ design patents issued between December, 1976 and December, 2007.

Comments

[ip-esq]

How did they reduce the pendency? Why don't they just do that for all patents?

[axharr]

But what about the Sears / Compco doctrine of patent protection pre-empting trade dress? Aren't design patents, under those precedents, a permanent opt-out from trade dress protection?

[anonymousAgent]

Hmm.. BIG surprise.
More epxerienced Examiners are MUCH MUCH more productive.
Who woulda thunk that?
This is why the (hopefully dead) "new rules" would have made pendency WORSE by making the USPTO a more miserable place to work, and chasing out the Examiners.

[X-Solo]

Interesting... I wondered about this relationship for quite awhile. As far as trademark v. design patent, I am not aware of any restrictions other than the design patent term.

[anon]

What happened between 1990 and 1995 that brought the pendency under control? Are you suggesting that examiner retention in the design patent examining corps changed, and that the USPTO did something affirmative to increase examiner retention during this period? If so, what?

[MaxDrei]

Coming from Europe, this might be a dumb comment. Alternatively, it might be an "Emperor has no Clothes" comment. When the task is to receive pictures, give them a registration number and then issue a registration certificate, why should that 1) take any length of time at all and 2) be comparable with the examination of novelty and obviousness of a utility patent claim (that aims to secure a 20 year monopoly over a serious portion of an active technical field). It's all about potency isn't it? If design patents cover little or nothing more than a perfect copy, why should examination of design applications be regarded by Applicants as any more than a formality? Well, that's the way it is in Europe anyway. UK Registered Designs (25 year term, reasonable scope) have always issued within weeks of the filing date (despite full "examination"). Question: how could they EVER have taken as long as 30 months, in ANY country? Answer: because Applicants didn't care how long they took to issue.

[johng]

"This is why the (hopefully dead) "new rules" would have made pendency WORSE by making the USPTO a more miserable place to work, and chasing out the Examiners."

Agent, the following off topic, but I thought I'd better post it while I remembered. I had a few beers with some old PTO buddies last night. It seems the PTO is prepared to take this all the way to the SC, if necessary. They are dreadfully adamant.

We couldn't arrive at any reason why they are so hell bent, other than possibly a power grab by the executive branch (with the PTO being a somewhat arbitrary choice).

I did make a plea to reach out and make a deal with us, but I would not count on that until after the election.

[johng]

I was also informed that examiners would not receive a "full count" for examining any application including a search that would be required under the reform bill. I'm sure the examiners will love that!

This is meant to force additional production.

[real anonymous]

"I was also informed that examiners would not receive a "full count" for examining any application including a search that would be required under the reform bill. I'm sure the examiners will love that!"

JohnG, that would be difficult for the USPTO to implement (I'm not saying they won't try). However, it was for this very reason (I believe) that POPA lobbied the House to change new 35 USC 123 (as passed) to additionally read:

"Any search report required by the Director may not substitute in any way for a search by an examiner of the prior art during examination."

[pds]

MaxDrei ... I suggest that you take a long, hard look in the mirror. You may find that you are missing something.

Regardless, your lack of knowledge as to US patent law is again revealed. U.S. design patents are substantively examined for novelty and obviousness. As such, obtaining a U.S. design patents doesn't simply involve obtaining a registration number/certificate.

[Paul F. Morgan]

One of the prior concerns about pendency of U.S. design patent applications was the 1960 revision of the "Hague Agreement Concerning the International Deposit of Industrial Designs", with a provision of forced automatic issuance of UNexamined design patent registrations if the USPTO did not examine them fast enough for that Convention [which it did not, and does not, do]. Article 12 of that proposed treaty provided that "if a Contracting Party did not send a notification of refusal within the prescribed time period, the grant of protection will ensue automatically. As a result, examining countries like the United States would be obliged to give effect to a design that may have not been examined .." [Quotation from the PTO FR Notice at that time.]
Also, the design application examiners about then started using more Ex Parte Quale actions, which speeds things up since so many of their objections are just for formalities.

[frances]

I talked to some design patent examiners last year, who said the PTO was a great place to work. The new facilities, the hours, etc. were great, especially for artists who have a hard time going it on their own. They could afford to do their artwork on the side. Design patent examiners are NOT engineers and scientists.
Referring to anon's "dumb comment" above, examining a design patent over prior art is not simple - for example, at what point does one complex curve "copy" a slightly different complex curve? Where does one draw the line? By who's standard? Too much money goes into developing the product behind a design patent for the patent to only cover exact copies. Read Gorham v. White.

[frances]

sorry, I was responding to MaxDrei, not anon.

[MaxDrei]

Well thanks Frances and pds. So, applications in USA to register designs are examined for "obviousness". So, original designs that are not "obvious" can get through to issue, but original designs that are nevertheless "obvious" are rejected? As John McEnroe might have said "You cannot be serious". Frances tells us the task of the Examiner is not simple. More or less impossible, I should have thought. No wonder pendencies are so long.

[student]

Maxdrei
Why are you so off-putting, sarcastic, mocking, contemptuous, condescending and disrespectful toward your American peers and everything to do with our American patent system? Did your momma drop you on your head too many times?

[Frances]

The Design Registration League has recently been resurrected, in order to present Congress with a proposal for sui generis legislation to protect industrial designs. In the past, such bills were defeated by the "infringing" lobby. There is a similar bill currently in front of Congress on behalf of the fashion industry. This type of legislation would be similar to the current European system, however its purpose is to bridge the gap between when a design patent is filed and when it is issued. Some products need only this light protection, but others need the 14-year protection of a design patent.

[curious]

Frances

Aren't there expedited procedures to give you that quick issuance?

[anon]

Has anyone ever considered the constitutionality of 37 CFR 1.56?

[Malcolm Mooney]

"U.S. design patents are substantively examined for novelty and obviousness."

Sure they are.

[student]

Maxdrei
Why are you so off-putting, sarcastic, mocking, contemptuous, condescending and disrespectful toward your American peers and everything to do with our American patent system? Did your momma drop you on your head too many times?

[Alan]

Today's (Dec 29) Nihon Keizai Shimbun reports that the JPO will provide preferential examination to Japanese applications that are also filed outside Japan. If the same application is filed in Japan and internationally, the JPO examiners will examine it within 6 months of the request for examination. Currently, the average wait is 25 months.

[Alan]

The JPO's action is directed at Korea. Under the Patent Prosecution Highway, strategic advantages go to the country with the fastest examiner corp. This is now Korea. By providing faster examination for JP applications with foreign equivalents, the JPO counters the Korean advantage and saves the JPO from having to accept too many Korean decisions.

[real anonymous]

"By providing faster examination for JP applications with foreign equivalents, the JPO counters the Korean advantage and saves the JPO from having to accept too many Korean decisions."

[begin dream]

If only the USPTO looked out for the interests of U.S. inventors like the JPO looks out for the interests of Japanese inventors.

[/end dream, begin sarcasm]

Perhaps (following Japan's lead) the USPTO should provide automatic 36 month deferred examination for United States applications that are also filed outside the United States, to ensure foreign PPH examination of American inventions. That way, the U.S. public would be better protected from U.S. patents issuing to American inventors.

[Alan]

I should point out that my 2:39 am comment was a summary of the article; my 6:11 am comment is strictly my opinion.

[patent leather]

"Over the past decade, the PTO has taken control of pendency problems in the design patent area. In the early 1990’s design patents averaged over 30 months in prosecution. By 2001, that average pendency had fallen to less than 15 months."

How did the USPTO achieve the reduction in design pendency? I don't really know, but I would surmise that they simply hired more design examiners. So much for Doll's insistence that "we can't hire our way out."

[Perry Saidman]

First, kudos to Professor Dennis. I have calculated that there’s a 67% chance that one of your new posts relates to design patents (this is based on a study of all posts during the past week!). It doesn’t matter that it’s a big vacation week, because your loyal (and addicted) posters (you know who you are) are responding as usual (some trying to steer the ship back to utility patents and patent reform). As an oft-neglected and not well understood res, design patents (aka Rodney Dangerfield) nevertheless appreciate the attention. Now to the merits.

To MaxDrei, pds and Frances – As noted, the differences in the two systems is simple: US design patents are substantively examined (for novelty, obviousness and functionality, inter alia), while community designs are registered (what goes in, comes out). This means that its up to the litigants in a European design infringement case to determine if the registered design is valid, i.e., is it novel (disclosed exactly in the prior art); does it have “individual character” (does the overall impression it produces on an informed user differ from the overall impression made on such a user by the prior art?); is it dictated solely by functional considerations? The real difference in the two systems: do you want to pay for this type of examination, and incur the delays, before design issuance (i.e., a US design patent), or do you want rapid, inexpensive design issuance and let the litigants in 0.1% of the cases worry about and pay for it? You don’t always need to buy a Mercedes to get from point A (creation) to point B (protection); you can do so in a Yugo. And once you get to point B, if necessary (i.e., overwhelming market success, infringement), you can trade in your Yugo for a Ferrari or Maserati. A bill to establish a US design registration system should be introduced into Congress next year. (p.s. to “student” – stop your nationalistic rant, or simply tell us your real name).

To Mr. Morgan – you are so correct about the increased use by design examiners of Quayle actions. The problem is that they are not used just for formalities; the things they want corrected after “prosecution on the merits is closed” are often the things that go to the very heart and substance of a design patent – the drawings! They close prosecution on the merits and require amendments to the claim (drawings) that materially alters the scope of protection – all in the name of reducing pendency. The overriding answer to reducing pendency was simply hiring more design examiners. Ask Lou Zarfas.

To MM – your post, as usual, is notably worth ignoring, except to say that you at least do not hide behind an anonymous name, which is worthy of respect.

[real anonymous]

"To MM – your post, as usual, is notably worth ignoring, except to say that you at least do not hide behind an anonymous name, which is worthy of respect."

Hehh. He also has a Wikipedia entry... but I haven't figured out why he's spending his time posting here though. (Perhaps someday Dennis will enable MP3 comments.)

http://en.wikipedia.org/wiki/Malcolm_Mooney

[Perry Saidman]

OK, I've been had. Malcolm Mooney is clearly a pseudonym. Figures. No one would say such outrageous stuff if they actually had to put their real name on it. Respect revoked.

[MaxDrei]

"Outrageous" Perry Saidman? Surely not. Provocative? Sure, but that's why we all tune in, isn't it? I'm only an outsider, so I know next to nothing, despite my 30+ years in IP but, for me, Malcolm Mooney (to my delight) sees things more vividly and perceptively than most other commentators to this blog. Of course, it hardly needs to be said, that navel-gazing nationals of any one country invariably find it "outrageous" what the rest of the world thinks about their country.

[Perry Saidman]

Aha! So Malcolm Mooney is MaxDrei! Mystery solved.

Outrageous? Provocative? Rather than get in a semantic debate, we can all agree that mocking the system catches ones eye.

And as for navel-gazing, let me make clear that not only do I prefer to gaze at other parts of the anatomy, but I am a great admirer (and user) of the European Community Design system, and you were absolutely spot on in your critique of US design patents (Judge Rich commented many years ago how ridiculous it was to try and gauge the obviousness of an ornamental design, but query: is this a lot different than judging whether a design has individual character as they do for an RCD?).

[Don Champagne]

Dennis,

I am a primary examiner in a utility patent art. I've enjoyed your daily newsletters, but none more so than this one. Your observations on design examination are fascinating. One other difference might be scale: the design area is about 1/50th the size of the utility area. One hopes that the Office is aware of and considering your observations about the design area, but simple scale-up by a factor of 50 is seldom easy.

Don Champagne

[MaxDrei]

Perry, I'm not MM (but I think you know that really). I agree let's not go semantic. I don't want to mock "the system" because I depend on it for my income. I like focussing on the bits of it that are vulnerable to mockery, because I think that might make the system better, in aggregate. As to navel-gazing, I was alluding to your own navel (even though there are these days plenty of other people who want you to gaze at theirs). Which other bit of your own body do you like looking at the most, I am wondering.

I'm intrigued that you are an admirer of the EU Design Right. I have been saying for some years now, that it is a system set up by well-meaning EU politicians to give home industry an advantage but it will deliver exactly the opposite of the expected consequence, and deliver non-EU industry an advantage (because they will use it and EU industry largely won't). I agree that individual character is an elusive concept maybe like "originality" in copyright but at least it's apt as a yardstick of registrability. In the (no Binding Precedent) civil law landscape of continental Europe, it's a lottery out there anyway. The best we can hope for is that the sheer numbers of cases (like those at the EPO involving "technical") will deliver such a huge population of Decision data points that, in the end, by Darwinian evolution of the fittest legal line, we shall come to know what "individual character" means. So, support your system: keep on filing, in bulk, at Alicante.

[anonexam]

Regarding johng | Dec 28, 2007 at 04:11 AM: If they take away the examiner's search and especially if they take away 1/2 count on top of that, they will be requiring me to give a thumbs up or down on what will be a lousy search in many cases. How will the examiner develop expertise in the prior art or know if something is allowable if he/she does not do the search? A little clue: they won't. Of course they'll still be held responsible for a bad allowance. If this happens attrition and pendency will go through the roof, and quality will drop through the floor, and the patent bar will be torqued off. POPA is actually doing the office a favor by lobbying for favorable working conditions. If production and working conditions made so terribly draconian, things will fall apart. My dad told me if you have responsibility and no authority, get out. And that is what I will do.

[johng]

anonexam, I agree that that proposition would be unacceptable and terribly misguided. But lately, so are most things coming from the PTO.