Design Patent Lawyers Want More from USPTO Guidance

The United States Patent and Trademark Office (USPTO) recently updated its Manual of Patent Examining Procedure (MPEP), including references to recent Federal Circuit design patent disputes. However, some attorneys believe the guidance is missing information on certain Federal Circuit cases that would be helpful for practitioners.

Finnegan partner Beth Ferrill pointed out to Managing Intellectual Property that the manual didn’t reference the 2018 Federal Circuit case Advantek v Shanghai Walk-Long Tools, which she says has some helpful guidance on prosecution history estoppel for design patents.

“We don’t get that much guidance from the Federal Circuit on designs, and it seems odd to me that when we do get some guidance, the USPTO doesn’t include that in the MPEP,” she said. “Because the changes took so long, there were other Federal Circuit decisions that have come out since the USPTO started revising its MPEP that didn’t appear in the most recent version.”

Beth added that examiners effectively ignore arguments that rely on cases that aren’t in the MPEP, which is why it’s important to include them.

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