Reflections on USPTO Design Day 2017: What’s Next?

Each April, the design patent community gathers at the USPTO to discuss design prosecution and protection. This year, on April 25, another sell-out crowd of over 300 people attended the 11th Annual USPTO Design Day, which is sponsored by the USPTO, IPO, AIPLA, the IP section of the ABA, and the IDSA. This year’s event including important updates on changes in Technology Center 2900 (which is responsible for all design examination), international protection of designs, including a special guest from the Canadian IP office, as well as evolving trends in fashion, the usefulness of motions to dismiss in design patent cases, and the potential effect of prosecution history in litigation and claim construction.

The Commissioner for Patents Drew Hirshfeld kicked off the event noting that the Office had a nearly ten-fold increase in Hague filings in FY2016 over FY2015.  To date, more than 200 U.S. design patents originating from Hague International Design Applications have issued, with many more in the examination pipeline.

Karen Young, who recently joined as the Director of Technology Center 2900, spoke next.  She comes to TC2900 after having served for more than thirty years at the USPTO in many other capacities.  She noted that 29 new examiners joined TC2900 in June 2016, bringing the total number of staff to 12 Supervisory Patent Examiners (SPEs), 1 Design Practice Specialist, and 187 examiners.  Some of those new hires included 11 examiners who reside in the USPTO’s San Jose office¾the first members of TC2900 to be located at a regional office.  In particular, Ms. Young highlighted the challenges in training and supervising a tech center which has doubled in size since 2012 and in which currently more than half of the examiners are junior.  Nonetheless, the tech center reported a 19.6 month overall pendency for design applications, with a first action coming on average at 12.9 months.  The Office currently has a backlog of 1,848 Hague applications and 44,578 applications waiting to be examined.  Ms. Young stated that in the future, it will be a careful balancing act of timing examining Hague applications, reducing the backlog, addressing the reissue and reexamination requests, while continuing to bring the new examiners up to speed.

Providing an update from the international perspective, David Gerk, Attorney-Advisor, Office of Policy and International Affairs, took the stage to explain the recent status of Hague filings, the WIPO Standing Committee on Law of Trademark, Industrial Design, and Geographical Indications (SCT), and the ID5 initiative.

On Hague, the U.S. is currently the second most-designated country by Hague filers, just after the EU and followed by Switzerland, Turkey, Japan, and Korea.  Looking broadly at the types of refusals issued by patent offices on Hague applications, many are classified as lacking “industrial applicability” or novelty.  After digging into the definition of “industrial applicability,” Mr. Gerk found that these types of rejections were much like written description or drawing issue rejections issued by the USPTO under the auspices of § 112.  As for future members of the Hague System, Russia plans to join in Fall 2017. China has also made “positive movement” towards joining and Canada amended their law in 2014 to facilitate accession to the treaty.

Having recently returned from the SCT talks in Geneva, Mr. Gerk said that WIPO is engaged in substantive discussions in many areas related to industrial design, including standardization of grace periods, application requirements, and restoration of priority rights.  WIPO also recently published an updated summary of the replies to its GUI, Icon, and Typeface/font questionnaire, now including responses from some NGOs. (Here is the full compilation.)

Finally, Mr. Gerk provided an update on the ID5 initiative, comprised of the five leading offices for design protection, including EU, Japan, South Korea, China, and US.  The group has a new website, which outlines its current twelve projects.  The US is currently responsible for projects related to studying priority document exchange, grace periods, partial designs, and protection of new technology designs.

The discussion then turned to the increasing use of motions to dismiss in design patent cases from the last fifteen years following the decisions in Twombly and Iqbal, and the change to Form 18.  The presenter, Richard Stockton of Banner and Witcoff, concluded that these motions have a 54% grant rate and thus are being used with growing force to counter overzealous design patent enforcement.

Next, back by popular demand, the Patent Prosecution Best Practices panel returned.  Tracy Durkin of Sterne Kessler and Patty Hong of Plumsea Law Group represented the practitioners and Primary Patent Examiners Philip Hyder and Darlington Ly gave an examiner’s perspective.  Through an exchange of best practices and a few pet peeves, the panel attempted to alleviate frustrations and help make the patent prosecution process more efficient.  The discussion, abled led by Alexis Simpson of Troutman Sanders, included discussion of titles, classification of designs, preliminary amendment and restriction practice, and use of appendices.

After lunch, the group heard from Senior Designer Matthew Zacherle and Senior Counsel Thomas Boshinski of WestRock, a corrugated packaging company based in Georgia.  Mr. Zacherle discussed the importance of unique package design to catch the consumer’s eye in the world of SKU proliferation.  Mr. Boshinski gave the audience some insight into how WestRock navigates protection of its designs through a host of legal issues.

Noted human factors expert, Charles Mauro led a fascinating panel on evolving IP issues related to fashion design.  The panelists, Erica Klein of Kramer Levin Naftalis & Frankel, attorney David H. Faux, and Julie Zerbo, attorney and blogger, discussed the lack of tools for effective protection of fashion.  Ms. Zerbo also mentioned the growing importance of trade secrets in this age of retail bankruptcies and frequent movement of leadership at fashion houses.  Mr. Faux outlined the importance of the Star Athletica v. Varsity Brands case and the expected uptick in copyright registrations related to fashion designs.

The most memorable part of Design Day was the mock argument between Chris Carani of McAndrews Held & Malloy and Damon Neagle of Design IP, before presiding mock judge Perry Saidman of Saidman DesignLaw Group.  Through a series of funny interactions between the bench and counsel and the frequent adjustment of Judge Saidman’s bench wig, the audience enjoyed a dramatic illustration of how the prosecution history of a design application and election in response to a restriction requirement can be used by both sides during litigation.  The speakers based one of their two vignettes on the Great Neck Saw Mfg. v. Star Asia USA case from the Western District of Washington in 2010.

The day ended with the summary of recent decisions by Joseph Anderson of Ballard Spahr, LLP.  Mr. Anderson discussed the recent Federal Circuit decisions in Wallace v. Ideavillage Products and Sports Dimension v. Coleman Co., district court cases including Columbia Sportswear v. Seirus Innovative Accessories, and finally concluded with PTAB IPR and PGR decisions, including Premier Gem Corp. v. Wing Yee Gems & Jewellery Ltd. and Aristocrat Technologies v. IGT.

The full set of slides will be posted shortly (and this post will be updated).  Until next year…