December 3, 2015
Law360
Authored by Elizabeth D. Ferrill and Elizabeth A. Shah
The common adage is that design patents are easier, quicker and less expensive to obtain than utility patents. First-action allowances or ex parte quayle actions, so elusive in the utility world, occur regularly in design applications. A number of factors contribute to the positive assessment of design patent applications, but the main reason is that we—the general public—tend to see only the success stories.
Because design patents (and their prosecution histories) generally only publish upon issuance, failed design applications that were rejected to the point of abandonment remain unknown to all but the applicant. Other applicants don't know what rejections stood in the way of allowance, how the law was applied by the examiner, what to avoid in future filings or what savvy arguments have been tried and failed. Only institutional applicants with large portfolios have access to enough rejected or abandoned applications to gain this understanding. Applicants and practitioners should recognize what we don't know about design patent prosecution, why, and its effect on prosecution.
For starters, it's a game of numbers. Design applications make up only a small fraction—an average of 5.74 percent since 2010—of patent applications filed each year with the U.S. Patent and Trademark Office.1 Accordingly, fewer design patents issue and eventually become visible to the public.
The USPTO does not release specific data on abandonment rates or rejections for design patent applications, but one study, based on Freedom of Information Act requests, found that abandonment rates for design patent applications typically hovers between 15 percent and 20 percent.2
Of the applications that are rejected or ultimately do not issue as patents, only a very small subset of the rejections are appealed outside of the USPTO to the courts to become part of the public record.3 Given the small population of design applications, this means that very little case law exists, and guidance from the courts is spotty at best. And, due to a historical emphasis from applicants and the USPTO on utility applications as opposed to design applications, literature, including the Manual of Patent Examining Procedure, provides comparatively little guidance for design applicants. Applicants are left trying to generate arguments and strategy by extrapolating from a sparse collection of old and potentially outdated case law.
The very nature of design patents compounds the issue. Because applicants expect design prosecution to be easier, quicker and less expensive than utility prosecution, they may naturally be less willing to continue arguing against repeated rejections. If prosecution stalls, they may instead opt to abandon the application rather than allocate a utility-application-sized budget to a design application. When the cost of responding to rejections begins dwarfing the cost of drafting and filing the design application, many applicants pull the plug. This likely results in fewer appeals to the Patent Trial and Appeal Board and fewer appeals to the Federal Circuit.
When appeals to the PTAB are considered, many applicants become surprised to hear that their design-application appeal would queue up in line right along with appeals for utility applications, rather than in a separate design-application line. At present, more than half of the pending 21,158 ex parte appeals before the PTAB have been waiting more than 14 months to be heard.4 One recent appeal to the Federal Circuit was from a design patent application originally filed in 2005. The notice of appeal to the predecessor board to the PTAB was filed in March 2010, the case was fully briefed in March 2012, and the board did not render a decision until September 2014.5 In comparison, the Trademark Trial and Appeal Board, which is also tasked with assessing pictorial representations of applicants, measures its age of pending appeals in weeks not months.6
The appeal backlogs deter many would be design and utility appellants alike, but for design applicants, the delays can be even more off-putting because the design of the new product line they're looking to protect may be outdated by the time a decision would issue. Moreover, any hope for timely protection against counterfeits would have long since passed.
Even a smaller number of design patent cases are appealed further beyond the USPTO to the Federal Circuit. The small number of appeals means that a body of case law addressing and clarifying design patent law has been slow to emerge, leaving applicants to sift through outdated case law. Yet even when design cases do reach the Federal Circuit, the opportunity for further public clarification in the design realm may still be lost. It is not uncommon for design matters to be decided with a Rule 36 affirmance rather than a precedential, or even nonprecedential, opinion.7 Thus, an already scarce and slow-to-develop body of case law may be stunted even further. Rather than obtaining new guidance, a Rule 36 affirmance leaves onlookers shuffling through solicitor briefs and uncitable decisions to add loose support to their arguments to examiners.
The cumulative effect is a pool of largely uncharted waters for even the most experienced design patent practitioners. Even experienced practitioners must rely predominantly on success stories and cautionary tales aggregated from their own experiences and those of their colleagues. Indeed, many applicants do not know about specific design-patent issues until they encounter these issues themselves when dealing with their own applications. There's no real way of knowing what type of rejections are gaining traction in the patent office, what rejections are relative anomalies and how others have navigated these obstacles before. Whereas everyone has heard an earful about the recent spate of § 101 issues at the USPTO, it would be difficult for problems of a similar scale to be aired in the design realm, given the lack of publication and the small population of design applications.
As a result of these factors, many applicants do not know about specific issues until an examiner raises them to the applicant during prosecution. This puts big design-application filers at an advantage. Companies that file many design applications may start to notice trends across their design portfolios and may be able to learn from this insight when drafting new applications. Smaller or one-off design applicants would not have this benefit and would not know where their design application fell on the overall spectrum of design rejections. Yet even larger filers may run into trouble.
For example, uncertainty shrouds the written description requirement for continuation applications. Like utility applications, 35 U.S.C. §§ 120 and 112 collectively govern whether the disclosure of an original, parent application is sufficient to support the disclosure of a continuation application. Specifically, the question is whether the design depicted in the original, parent application reasonably conveys to those skilled in the art that the applicant had possession of the design depicted in the continuation application at the time the original application was filed.
While USPTO guidance has long interpreted the case law as permitting amendments converting solid lines to broken lines, or vice versa,8 experience shows that this is not as straightforward as it seems. In 2014, the USPTO issued proposed guidelines to examiners on § 112 practice and solicited public comments and held a round table to address concerns. Yet, the feedback the USPTO received indicated that the proposed changes were even less clear than the current standard, and, to date, the USPTO has not issued any guidance. As a result, the uncertainty remains and the point of contention between applicant and examiner often focuses on what portions of the figures in the parent application can be disclaimed or claimed in the continuation application without a new matter rejection.
In the midst of this uncertainty, some have called for publication of design applications to shed light on design prosecution. At first, this may seem like a good solution, but publication comes with many downsides. On a practical note, pre-issuance publication of design applications could lengthen the pendency for all design applications. Utility patent applications publish after 18 months, whereas design applications often issue—and thus are publicly available—before then. It is possible that publication of design applications could occur sooner, but given the amount of work already on the USPTO's plate, they would be hard-pressed to publish quality design images in a year or less, meaning pendency may be drawn out to accommodate publication.
On a more substantive note, secrecy for pending designs has value, too. Design patents protect the look of a product, not its function. Generally speaking, the look of a product is far easier to copy than the actual function of a product. If applicants properly file applications before they bring a product to market and their designs became public before their products hit the shelves, then copycats and counterfeiters may be able to beat the innovator to market, dis-incentivizing innovation. And companies may no longer to build hype and anticipation over new products if images of the product are publicly available via the USPTO.
In sum, pre-grant publication may create more problems than it solves. Publication would likely lengthen pendency across the board, and slowing prosecution for all applications is a high price to pay for shedding light on the inner workings a small minority of applications.
So where does that leave us now? There's a chance some of these concerns lessen over time. Going forward, inter partes reviews and post-grant reviews of design patents will be available to the public. If pendency times decrease for all patent applications, then perhaps more design applications will be appealed. The PTAB could consider making opinions or applications of the law precedential for some important negative decisions, even if the actual designs themselves weren't ultimately made public. But, in the meantime, there are some steps applicants can take to position themselves adeptly for whatever prosecution may bring.
When drafting a design application, spend time to generate better figures and determine whether the prosecution strategy may eventually include continuations or divisionals. Often applicants quote the “cheaper, faster” model of design patents and don't want to spend extra money at the outset preparing new figures. Yet, this may lead to wasted money in the long run if basic problems in the figures have to be corrected during prosecution, or worse, are fatal to the application.
Identifying the potential for continuation applications can help an applicant flesh out an initial set of figures to incorporate all alternative portions or boundary lines that may eventually need to be claimed or disclaimed. Sometimes employing an appendix with images of the device can also serve as a backup during prosecution should the applicant need to rely on information not captured in the original figures during examination.
Understand the shelf life of the design you're pursing patent rights for. Knowing the amount of time and resources an applicant is willing to allocate towards obtaining a design patent will allow you to more-precisely assess your prosecution strategy if you don't receive a first-action allowance or ex parte quayle action, as expected. Knowing the tolerance and budget for office action responses will help provide an outline for decision-making during prosecution.
Finally, follow in the footsteps of success stories that are available. Applicants and practitioners venturing out into the design world should draw upon issued design patents as an indicator of what has worked. While some challenges remain for design patent prosecution, the allowance rate of design applications is still much higher than that for utility applications and the average pendency is much shorter, making them to a good strategy to consider as part of a diverse intellectual property portfolio.
Endnotes
1 See http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm. Average of design patent applications filed out of design and utility patent application filed, of U.S. patents applications filed in 20102014.
2 See Jason J. Du Mont & Mark D. Janis, Virtual Designs, 17 Stan. Tech. L. Rev. 107, 180 (2013) (Table 11: Abandonments).
3 Some examples include In re Owens, 710 F.3d 1362 (Fed. Cir. 2013) (affirming the rejection of a claim directed to a portion of a container), In re Borden, 90 F.3d 1570 (Fed. Cir. 1996)(affirming the rejection of a claim directed to twin neck dispensing container).
4 See http://www.uspto.gov/dashboards/patenttrialandappealboard/main.dashxml.
5 See In re Sheikha Lateefah Alsabah, No. 151264 (Fed. Cir. March 16, 2015).
6 See http://www.uspto.gov/dashboards/TTAB/main.dashxml (Age of Pending Appeals).
7 See In re Sheikha Lateefah Alsabah, No. 151264 (Fed. Cir. October 16, 2015) (Rule 36 Judgment).
8 M.P.E.P. § 1504.04 (I.B. New Matter); see also In re Owens, 710 F.3d 1362 (Fed. Cir. 2013);
Originally printed in Law360 (www.law360.com). Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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