Cases at the Patent Trial and Appeal Board (PTAB) involving design patents are rare. Of the more than 6,4000 petitions filed at the PTAB since 2012, only 41 have challenged a design patent. Despite the increase in the number of design patent applications over the years, and the recent high-profile Apple v. Samsung design patent case at the Supreme Court, many attorneys believe that the cost of AIA reviews has contributed to the lack of proceedings involving design patents. Law360 reached to Finnegan attorney Elizabeth D. Ferrill for her thoughts.
Ferrill said, "If there’s a lawsuit involved, then the cost of the PGR maybe makes some sense. But if there’s no lawsuit, that’s a pretty expensive proposition to take on when you also consider that typically in cases with important, marquee products, the patent owner may still have a patent pending at the patent office." She said that while the number of design patent applications has risen, cases involving design patents have remained steady over the past decade, which may also explain why there haven't been more challenges at the PTAB. "If you view IPRs as typically being tied to litigation, the fact that the [patent application] filings go up doesn’t necessarily mean that the IPRs are going to go up," she said.
