Most utility patent applications are rejected at least once on either anticipation or obviousness. Design patents are different.
As part of a larger project, I combed through 1049 file histories of design patents that issued in the past 12 months. Of those, 5 were rejected on novelty grounds and 8 on obviousness. This leads to a prior-art-based rejection rate of 1.2% (95% CI range of 0.7% – 2.1%). The vast majority of the patents (81.6%) were never rejected during prosecution. The most common rejections are under 35 USC 112 paragraphs 1 and 2. Typically both paragraphs are asserted simultaneously.
According to the most recent USPTO annual report, design patents had an allowance rate of about 90% during the period FY2005–FY2009 as measured by the percentage of disposals that were allowances. About half of design patents issued in 2009 were pending for less than one year.
These numbers suggest that the US design patent system is operating as a registration system rather than as one based on a true examination. Along this vein, it is typically easier and cheaper to prosecute a design patent to issuance than to register a product design as trade dress. To be clear, I support the idea of a design patent registration system. More on that in another post.
Hello I think “hat said, the USPTO does release annualized numbers for the count of design patent applications that are (i) filed; (ii) abandoned; (iii) allowed; and (iv) issued. This data shows that only about 10% of design patents are abandoned during prosecution.”
Professor Crouch-Do you have any information on the examiners for design patents? Do they have art, art theory, design backgrounds at all? Or are they examined by people with skills in the relevant technology?
Design patents are an idea whose time finally seems to have come (maybe thanks in part to Paris Hilton’s latest gaffe). I predict that design patents will become the next big thing in patent law.
Design patents are an idea whose time finally seems to have come (maybe thanks in part to Paris Hilton’s latest gaffe). I predict that design patents will become the next big thing in patent law.
I guess this statistic helps explain the “Sailing Through” statistic that Prof. Crouch posted earlier. If there are no rejections for the vast majority of the design patents, then it would make sense that they issue in a year or less.
I only agree with the statistics and conclusion to a limited extent, and with added context. In my opinion, if you experience the US design patent system as a de facto registration system, you likely are drafting too narrow of claim scope and not fully achieving the broadest possible protection. I agree that US design patent applications receive far fewer prior art rejections than utility patents. But considering the US system a de facto registration system fails to distinguish the wide variation in scope of protection of US design patents. Very narrow US design patent claims, like very narrow US utility patent claims, are rarely going to receive prior art rejections. Broad US design claims are more likely to receive prior art rejections — still not as frequently as utility patents, but also not to the minimal extent expressed by the statistics.
The statistics can only be as accurate as Dennis has data available, and it is not feasible to segment the data by degree of breadth of claim scope. It would be interesting to at least see the data segmented by design patents that include a broken line statment and those that do not, which should at least provide some indication of a distinction between broad and narrow claim scope, although admittedly a rough indication. I would expect higher prior art rejeciton %’s when broken line statements are included. (Dennis, can you break the data down this way?)
To be clear, I support the idea of a design patent registration system.
I certainly don’t have a problem with it, provided it’s “out in the open” and there isn’t any presumption of validity associated with the design patents (that would include any design patent ever issued).
Thanks Dennis! This answers a long-standing but previously unproven asumption about U.S. design patents.
As to the 10% of abandoned design patent applications, it is highly likely that most are abandoned for other reasons. Such as having been filed on various proposed designs subsequently not selected for the actual product. Or all the design applications filed via “invention promotion companies” with money taken from individual inventors mislead into thinking they were getting real (utility) patent protection.
These statistics on how few design applications ever even had any prior art cited against them ought to also raise questions as to whether or not design patents deserve a uniquely high “clear and convincing evidence” test to invalidate with previously uncited prior art.
S. James Says: There is one substantial flaw in you analysis that the US has a de facto registration system. Your data doesn’t show abandonment data. Admittedly this is difficult to obtain because design applications stay secret unless they issue.
D. Crouch Replies: I appreciate this comment and have struggled with the issue. I agree that abandonment data for design patents is something of a black hole because the file histories of abandoned design patent applications are never made public. That said, the USPTO does release annualized numbers for the count of design patent applications that are (i) filed; (ii) abandoned; (iii) allowed; and (iv) issued. This data shows that only about 10% of design patents are abandoned during prosecution. With those numbers, we can place an upper bound on the percent of design applications rejected on prior art grounds at about 11%. Of course, it is very unlikely that all of the abandoned applications were rejected on prior-art grounds.
Prof Crouch –
There is one substantial flaw in you analysis that the US has a de facto registration system. Your data doesn’t show abandonment data. Admittedly this is difficult to obtain because design applications stay secret unless they issue.
My personal experience is that clients are more likely to abandon design claims rejected on the merits than similarly situated utility claims.
“For most design inventions, registration is just fine. I suspect they same would be true if we went to a system for registering utility patents.”
I don’t see how that would work unless you also change the scope of utility patents to be the same as design patents (essentially what is exactly disclosed, and not broader). If anything, a patent registration system for utility patents would open wide the troll floodgates. (Well, ok, wider than they already were by State Street.)
Dennis makes the case that notwithstanding what we may call it, America has a registration system for designs. Do we consequently lag the world in design? No? Then perhaps innovation really does not require anything more substantial than a system of registration, backed by substantial examination when the time comes to litigate.
For most design inventions, registration is just fine. I suspect they same would be true if we went to a system for registering utility patents.
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