Design Patents: Sailing Through the PTO

Over eighty percent of utility patent applications are initially rejected during prosecution. Some areas of technology – such as semiconductors – have a lower rejection rate while others – such as electronic commerce methods – have an even higher rejection rate.

I wanted to compare the result for utility patents with design patents. I pulled up information on 1000 of the most recently issued design patents (all issued in March, 2009) and parsed through the file histories to see how design patent prosecution compares. As the graph below shows, in my sample, only 25.6% of the recently issued patents received an initial rejection during prosecution. To be clear, this 25% rejection rate is for applications that eventually issue as patents. To get an overall picture of design patent rejections, we need to also consider the applications that are abandoned and never issue as patents. Recent PTO statistics show that a bit under 20% of design patent applications are abandoned. Because design patent file histories are kept secret unless a patent issues, we cannot know why any individual case is abandoned – However, the two most likely situations are that the applicant (a) failed to respond to a rejection or (b) failed to pay the issue fee. Even if we assume that 100% of the abandoned cases are initially rejected, that only pushes the initial rejection rate to about 40%.

As the graph below shows, of the 1000 issued design patents in my sample, only 4.1% received a final rejection during prosecution; and only 0.2% cases (2 out of 1000) included a notice of appeal. None of the 1000 cases included an appeal brief.

The design patents in the study had an average pendency of 15.3 months calculated by finding the number of months between the filing date and the issue date. As may be expected, applications that included at least one rejection took considerably longer to issue (21.5 months) as compared to those that were never rejected (13.2 months). (These means are different at 99.9 CI).

Most design patents (58%) in my sample have only one inventor. However, 69% of the inventors are listed as joint inventors. A number of the muliti-inventor patents included trans-national inventorship with inventors originating from two or more separate countries. About 1% of the applications listed at least one inventor from the US & Great Britain. Another 1% listed at least one inventor from both the US and China.

Comments

[6]

"Well over eighty percent of utility patent applications are initially rejected during prosecution. Some areas of technology – such as semiconductors – have a lower rejection rate while others "

That is factually incorrect. Though a particular sample size may have led you to believe this, a more long term view tells a different story.

[Snake Fist]

Well, 6, don't just say the given number is incorrect, give us the correct number. What is it? And I'm sure the numbers look a lot better over the long term, i.e., when you include pre-Dudas numbers.

[Night Writer Patent Attorney]

>>don't just say the given number is incorrect

Examiners just tell you you are wrong. They don't tell you the right answer.

[Snake Fist]

Night Writer, truer words have never been said. I don't know what I was thinking when I asked 6 to justify his rejection.

[6]

From the official numbers of the last few years iidrc semiconductors was not that different from my own AU and was right at just above 80%, perhaps their nums have changed a bit, but I doubt it is enough to drag down those rates below 80% over the whole of the last few years. Maybe the rates are a bit lower for the last 6 mo or something I haven't seen those nums in a bit. We had a big presentation that broke down all the TC's by groups and showed the nums for them. I threw away the paper already though. Or if I did its buried somewhere.

He isn't off by much though in any event.

[Paul F. Morgan]

Re "only 25.6% of the [1000] recently issued [design] patents received an initial rejection"

And I wonder how many of even those were on mere formalities that should have gotten an Ex Parte Quale action?

[Perry Saidman]

It would be interesting to view these 1000 design patents in the study. I would venture a guess, based on my experience in this area, that the first action allowances in design patents likely result from overly narrow, in some cases probably ridiculously narrow, claims. Just as in utility patents, when you file a picture claim, you're going to get a fast Notice of Allowance; the Examiners can't wait to get their hands on those cases.

[cg]

As a patent practitioner who splits duties between design and utility patent prep and prosecution, the data in today's post is not suprising at all. Design examiners actually work with the applicant to achieve allowable patent applications that are of high quality and accurate by overcoming issues serving to prevent patentability. Even though this most often involves drawing objections, design examiners are helpful and work positively with the applicant to resolve the problem. I find this to be a stark contrast with many (not all, but perhaps most) utility examiners that are less interested in the U.S. patent system arriving at allowance of high quality and accurate patents. Many (most?) utility examiners have an "it's not my problem" attitude. Design examiners have a "we're part of the equation and part of the solution" attitude.

[breadcrumbs]

If indeed what cg states is true, why is there such a stark contrast in culture within the examing ranks? Perhaps a study of turnover/new indoctrination (training) along the specific ranks would indicate a bias.

Would such a bias (assuming that it does exist), need to be considered by the Office in its rules making under the President's Executive Order (Dave Boundy might have a comment on this)? Would such an indepedent (and verifiable) study be dismissable by the Office?

[EG]

cg,

Thanks for your comments. What you say about the design examiners is similar to my experience with the Trademark Attorneys: they work with you to reach a consensus, if one is possible. What do you think it would take to change the "it's not my problem" attitude of the utility examiners? I'm being serious (and I'm also not saying it's solely the fault of the utility examiners either), as changing such a "gatekeeper" mindset is going to be important to the U.S. examination system going forward into the future. The pending oxymoronic "patent reform" legislation does nothing to address such an attitude, and other than stopping fee diversion, is probably not the way to change this attitude.

[captian obvious]

I've heard that design examiners are actually attorneys. Can anyone confirm?

[LCE]

CG and eg... After over 30 years prosecuting Design, Utility and Trademark applications, you have stated EXACTLY what I was going to say. The Design and TM examiners are sooo sooo helpful, and yes, the TM examiners ARE attorneys. The utility patent examiners used to be much more helpuful, but that was in the 70's and 80's... but in general, for the last 15 years or so, the examiners have not offereed much help in overcoming prior art rejections (some examiners do offer helpful comments concerning their 112 rejections). Some of the older examiners, whom I have dealt with only via Office Actions over 20 years... are still as helpful as they were 20 years ago, but only a few of them are still around in the same or similar art area.

[don't bother]

"I've heard that design examiners are actually attorneys. Can anyone confirm?"

No. Design examiners are not attorneys.

[Alan McDonald]

Could it also be that, except for automobile and shoe companies, few see design patents as all that important?

No one is trying to collect royalties on the total sales dollars of $23 billion of computer sales based on a design patent.

[Frances L.]

But design examiners are often designers or artists, versus engineers or scientists. Perhaps that explains their more flexible and relaxed style of examination. There is typically a spirit of generosity and sharing surrounding the arts, unlike (in my experience, at least) in the hard sciences. Just different mindsets that suit their respective disciplines.

See all ya design patent fans Monday at the PTO!

[TheTwoBobs]

Examining a utility application is literally orders of magnitude more difficult than examining a design or a trademark application, which I suspect leaves utility patent examiners both beginning and ending their day in a far worse mood than is the case for trademark or design examiners. Unhappy people tend not to go out of their way to help others.

Thus it has always been, and thus it shall always be.

[An RC Cola and a Moonpie]

I agree with thetwoboobs.

[Paul F. Morgan]

An above commentator makes an important point. Too many design patent applications are way too narrow in scope. [Usually because the applicants attorney fails to use dashed lines instead of solid lines for non-essential features in the drawings, which of course limits the claim scope.]

[Keith]

"Thus it has always been, and thus it shall always be."

Not so. Utility Examiners of just ten years ago were far more helpful, on average, than the current examiners. I used to enjoy visiting the office to talk to the examiners and phone calls were pleasant experiences.

Ah, those were the days . . .

If they are more unhappy now, and hence less helpful, I would assume that is a management issue.

Management. There is a word that needs to be explored in the PTO.

[Dennis Crouch]

6 (or some other examiner) - Can you find the breakdown on the % of Initial Rejections (IIDRC?) by Art Unit and e-mail it to me?

[6]

"6 (or some other examiner) - Can you find the breakdown on the % of Initial Rejections (IIDRC?) by Art Unit and e-mail it to me? "

I already looked for it after I posted, I must have thrown it away. Someone else might have it though. I don't think it was by AU though, I think it was by small groups of AU's.

[Malcolm Mooney]

Design patents are not examined in any meaningful way. They are a worse joke than a software patent issued in, say, 2001.

[inviting body punches]

Mooney--

Having "prosecuted" several design patents, I would have to agree with you, to a point.

The prior art of designs is not quickly and easily searchable. The single best resource for prior art, and its comparison to the claimed design, is the human mind. The value of an experienced designer, or observer of designs, or market participant cannot be underestimated. They represent an immediately accessible repository of design knowledge and awareness that is unmatched by any externally available system.

I have received PTO search results on these apps that have no relation whatsoever to the claimed design. It makes me wonder if they just put references in to achieve a certain bulk that makes it look like they did some work.

That being said, a good, seasoned design examiner would be extremely valuable--I suppose the same could be said for any AU, though. The bad ones are, however, worse than useless, as they find no meaningfully related art to assist the applicant.

Also, in my experience, development of designs is not as cumulative as development in utility fields, where you often have to know everything that came before in order to take the next step and end up with something patentable. A 4-year-old child can render a patentable design in minutes. This makes the field of prior art immense, diffuse, and poorly documented.

[hmmm]

"Some areas of technology – such as semiconductors – have a lower rejection rate"

Does anyone have data to back this up??? I've seen too many over-broad semiconductor patents issued, but this has got to be incorrect.

[Lionel Hutz]

Why wouldn't you expect the vast majority to be allowed? They cover the ornamental features of a product. There is only one claim. It really boils down to (1) what elements are nonfunctional, and (2) is the Examiner aware or can he find a similar deign for a similar product in existence.

[MaxDrei]

I had always supposed that design patent apps sail through because they are no threat to anybody but a copier, while biotech, software and business method claims have run into a concrete wall at the PTO because of a public perception that they can hold an entire industry sector to ransom. Can we hear from the PTO Examiners who handle utility apps for mousetraps, or padlocks? I imagine they continue to get on just great with inventors and prosecuting attorneys, whether or not they are qualified attorneys at law.