USPTO Design Day 2016

On April 19, 2016, the United States Patent and Trademark Office (“USPTO”) hosted the 10^th annual Design Day, a day-long seminar covering updates and developments in the design patent world.  The free event was well attended, drawing practitioners and designers from throughout the country and even internationally, in addition to a number of patent examiners from the design patent technology center, TC 2900.  The attendance speaks to the growing importance of design patents in the eyes of practitioners and inventors alike.

The day began with a presentation by Andrew Hirshfeld, Commissioner for Patents USPTO.  Mr. Hirshfeld noted the significant increases in design patent filings and the number of design patent examiners since he joined the office in 1987.  Historical data can be found here.  Notably, Mr. Hirshfeld mentioned that approximately 80 new design patent examiners have been added over the past three years, including 15 examiners in the Silicon Valley Regional Office.  On the international front, Mr. Hirshfeld mentioned that the USPTO will be issuing the first registration based on an International Application under the Hague System in the next week.

Next, Robert P. Olszewski, Director of TC 2900, discussed the make-up of TC 2900 and the statistical overview in more detail.  Specifically, Mr. Olszewski reported that TC 2900 currently includes 191 personnel: 1 Director, 12 supervisory examiners, 1 design practice specialist, 166 examiners, 1 technical support team lead, 9 technical support team members, and 1 office manager.  They expect to increase the number of examiners to approximately 195 by the end of 2016.  This growth is needed to overcome the current backlog of cases.  Mr. Olszewski stated that applications have increase by an average of 3% over the past three years.  They have closed the gap on matching the number of outgoing 1^st actions with the number of incoming cases in 2015 and expect to begin reducing the current backlog of 41,055 cases with the increase in examiners. Mr. Olszewski also noted that there is currently an average of 13.7 months to 1^st action, up from 8.5 in 2010, and an average of 19.7 months to issue, up from 14 in 2010.  In closing, Mr. Olszewski announced his planned retirement at the end of this year.

In his presentation, Mr. Olszewski took a moment to discuss an initiative to improve drawing quality in publications and issued patents.  There has been a degradation issue during reproduction due to a conversion from vector to raster graphics.  The process is being improved to avoid degradation and should take full effect by the end of the year.

David Gerk, Attorney-Advisor Office of Policy and International Affairs at the USPTO, took the podium next to speak about international developments.  He touched on the Industrial Design 5 (“ID5”) forum, the WIPO Standing Committee on Trademarks, and the Hague Agreement.  The ID5 forum included the 5 largest design offices and WIPO.  The ID5 make up for 90% of design filings in the world.  The forum covered a number of topics for harmonizing design law around the world.  Topics of note included priority document exchange and the implications of new technological designs.  Additionally, 40+ jurisdictions, including the ID5, have cooperated to create a centralized Design Search platform: DesignView.

Next, Gregoire Bisson from WIPO discussed the Hague System Implementation.  Mr. Bisson noted key aspects of protection through the Hague System, including the ability to file up to 100 different designs in a single application, the requirement for designated jurisdictions to issue any substantive refusals within 12 months of designation, and the 5 year renewal period. Mr. Bisson also highlighted differences between filing directly through WIPO and filing indirectly through the USPTO.  If filed directly through WIPO, an applicant is able to amend the filing electronically through WIPO’s online forms.  This is not possible for applications filed through the USPTO.  However, applications filed through the USPTO are automatically granted a foreign filing license, while those filed directly with WIPO are not.  Mr. Bisson reported that of the 256 US Hague filings, 114 have been filed directly to WIPO and 142 have been filed indirectly through the USPTO.  Mr. Bisson also noted that the USPTO turnaround time has improved from approximately 60 days in 2015 to around 10 days in 2016.  In closing, Mr. Bisson mentioned interesting statistics, including that the average US Hague application included 5 designs, 76% of indirect filings through the USPTO included a priority claim to a US application despite the automatic foreign filing license, and that the European Union was the most commonly designated jurisdiction at approximately 86%.

Bryce Rufener of Caterpillar Inc. followed Mr. Bisson with an update on recent MPEP changes and their implications.  He highlighted changes covering whether the title of a design application impacts the scope, the use of surface shading, and the acceptance of color drawings without meeting additional requirements.  Mr. Rufener pointed out several seemingly contradictory sections of the MPEP.  For example, section 1504.02 covering novelty states that the reference must be identical in all material respects to find anticipation, while also stating that the ordinary observer test is the sole test for anticipation.

Before lunch, a panel of examiners and practitioners discussed best practices.  The panel, which was moderated by Elizabeth Ferrill of Finnegan LLP, included Jeffrey Asch and Karen Kearney from the USPTO and practitioners Robert Katz of Baner & Witcoff Ltd and Margaret Polson of Polson IP Law.  The first topic of discussion was the use of generic titles.  All parties agreed that clear titles are helpful for examiner search purposes.  Robert Katz noted that there could be analogous art issues, 103 issues, and infringement issues caused by titles.  Next, the panel discussed elements of the specification, particularly broken line statements.  Ms. Ferrill mentioned the continually changing broken line statement requirements by examiners and how it is viewed by clients. From the audience, Perry Saidman expressed concern over the ability of examiners to amend the specification ex parte.  Mr. Saidman noted the potential litigation issues this can cause.  Mr. Ash commented that examiners are pressured to expedite examination, but only by changing non-substantive typographical and procedural miscues.  He noted that this could be a potential area for improvement.  Other topics included whether absolute language, such as “must,” should be used by examiners in office actions and the need for excessive Information Disclosure Statements.

The afternoon session started out with Brian Kelleghan, founder and owner of Bison Designs.  Mr. Kelleghan provided his personal experiences and observations as a designer and entrepreneur/business owner.

Daniel Martinage and Austen Angell of IDSA followed with an update from the Industrial Designers Society of America (“IDSA”).  Mr. Angell commented on recent trends in the design world.

After the IDSA update, Mesmin Pierre, Director of Copyright and Industrial Design Branch of the Canadian Intellectual Property Office, spoke on practice changes in Canada.  Of particular note, Mr. Pierre noted that Canada is joining 5 IP treaties and will implement the Hague System by 2018.

After a mid-afternoon break, Daniel Gajewski of Sterne Kessler Goldstein & Fox PLLC provided a look back at cases that have influenced design patent examination.  Mr. Gajewski covered cases concerning new matter, obviousness, and color.  With regard to new matter, Mr. Gajewski noted that In re Mann is often cited, but stressed that it is inapplicable for new matter rejections.  He contends that only experimental use was at issue in In re Mann, as noted in the opinion.  In re Salmon; however, remains applicable.  With regard to obviousness, Mr. Gajewski highlighted the famous In re Rosen case, which established the need for a “Rosen reference.”  Mr. Gajewski continued to point out two PTAB cases that provide non-precedential, but useful examples of how obviousness is applied.  These were Vitro Packaging v. Saverglass and Vanguard Identification Systems v. Bank of America.

Next, James Aquilina of Design IP PC discussed the much anticipated Apple v. Samsung case to be heard by the Supreme Court.  Mr. Aquilina discussed the issues to be considered, namely the award of Total Profits, the legislative history behind the Total Profits statute, and the arguments by each side.  Apple’s core argument will be directed to the plain language of the statute, which provides for total damages.  Samsung, on the other hand, will argue that an article of manufacture does not refer to the entire product.

Finally, William Seymour of Lando & Anastasi LLP concluded the day with a report on design patent litigation and case law over the past year.  His overview included key statistics and insight on the litigation landscape.  He noted 330 design patent cases were filed last year, which is down 3% from 2015, but up 21% since 2008, when the precedential Egyptian Goddess case was decided.  He noted the top venue for design patent litigation was the Central District of California, with 28% of the cases filed, and the top industry for design patent litigation was Apparel and Haberdashery with 10% of the cases.  Mr. Seymour also noted that, to his knowledge, Apple v. Samsung is currently the only case covering icons.  He reported that in 2016, 6 petitions for inter partes review were filed, 3 were instituted, and 1 final determination was made.  Mr. Seymour concluded with a brief summary of key cases over the past year spanning infringement, functionality and obviousness.