Design Patent Pendency

DesignPatentPendency

The prosecution timeline for design patents continues to be relatively fast.  For both 2010 and 2011, the majority (54%) of design patents issued within one year of the application filing date. The most common delay in issuance is due to some error in the drawings leading to a 31 U.S.C. 112 issue. Very few design patent applications are ever rejected on prior art grounds. Apple's design patents have been at the center of its lawsuit against Samsung. As I wrote in an article a few years ago, design patents are really being used as an overlay for trade dress protection. 

26 thoughts on “Design Patent Pendency

  1. For instance, Perry, take a look at the Mayo v Prometheus Hot Button thread…

    MM calls Babble Boy the World’s Lamest Patent Txxbxgger (TM)

    AI accusing MM of juvenile personal attacks

    Mighty Big Stone accusing MM of being incapable of logic

    MM calls somebody out as a sokpuppet

    Somebody accuses MM of misrepresentation and dust-kicking

    SteveW accusing somebody of saying nothing remotely interesting and understandable

    Somebody accusing SteveW of posting nonsense

    MM accusing WLPT (TM) of jack-axx comments

    AI accusing MM of distortion, exaggeration, evasion, misrepresentation, and straw-man tactics

    Ned accusing AI of being a pugnacious, lying snot

    Somebody accusing Ned of being a drama queen

    Ned accusing somebody of mere diversionary tactics

    AI accusing Ned of being a conflator

    JAOI calls AI annoying and nobody’s patent expert

    6 calling JAOI an Ebay id-i0t and AI a scam-ster troll

    Come on Perry, given the sort of tribulations that others are easily capable of enduring, surely you can endure the presentation of some inconvenient facts.

    By posting comments like you did at 8:23 am and on other threads, you have revealed yourself as not above the fray.

    You have brought upon yourself the duty to respond to not only myself, but also to publius, article substantially as shown and described, MM, and others.

    Will YOU be sufficiently courageous to discharge these duties?

    Come on, let’s start with functionality. I took a look at that old thread, and I remember having read your article some time ago. I think there’s something worth discussing in all that.

    And to all the other regular posters who are shining so brightly on the hot button thread, here’s to you!

    Season’s Greetings,

    Inviting Body Punches

  2. Apologies to MaxDrei (euro-booster), AI (blue-collar ignoramus), and any others whose disparagements I have failed to include.

    A special shout out to anyone who has, rightly or wrongly, ever been labelled a “patent teab@gger”.

  3. Come on Perry, we’re really all friends here.

    Sure we all get on each other’s nerves sometimes, but that happens in any family.

    From time to time, we all violate those touchstones of good conduct that we all would be wise to follow–things like put up or shut up, those in glass houses shouldn’t throw stones, be careful what you ask for for you might get it, etc..

    But we all manage to deal with our foibles somehow, and ultimately manage to get along. MM has been called out as a loudmouthed ignorant examiner, 6 as a public sector union hack, IANAE as a know-nothing ivory tower type, Ned as a daydreamer, me as a blowhard hobby-horse rider, Les as a doofus, NAL as, well, anything and everything disparaging that you could ever think of.

    We all manage to deal with it somehow, and we are all accepted back into the fold, as allegiances shift over time and according to emerging issues and politics.

    Consider that myself, MM, and publius have actively invited you back into the mix.

    I’m sure your contributions could serve as fertilizer.

  4. “If a patent attorney is not getting a prior art rejection under 102 or 103, your claim is too narrow.”

    So the goal is to intentionally waste the Office’s resources by filing a claim you know will be rejected? If you don’t want a patent, then why file an application?

    I’m also curious to know what is so wrong with filing a picture claim to start out. If that claim is soundly beaten by art then you know you’re done. If not, couldn’t you then review the closest art the examiner cites and broaden out your claims accordingly?

  5. I’m still waiting for Perry to back up his assertion that the most difficult designs to come up with are the simplest ones.

  6. You sir, misunderstand the willingness to state your real name for courage.

    The two simply are not the same.

    I would much rather have you take the “courage” to answer the questions put to you by Inviting Body Punches. It appears that nearly a year has lapsed without such “courage.”

  7. And who, sir, are you? Do you have the courage to state your identity, to take responsibility for your commentary? Dennis Crouch does. I do. Do you?

  8. A BS call out to Perry. I often find that those who sceam “But show us who you really are” are screaming that to draw attention to what they themselves are not doing.

    Courage may or may not have anything to do with signing one’s name. In fact, singing one’s name is no guarantee of anything.

    Whether the name signed is real or not, the question raised is, the topic is, the issue is.

    Address the substance and leave the detective work for others.

  9. Perry–

    Who am I? I’m the one whose professional competence you impugned, not at all well, in your 8:23 am post.

    I’m still waiting for you to educate us all on the functionality issue in Best Lock, as you suggested you might do on this thread from 2009:

    link to patentlyo.com

    Believe it or not, I admit that there are things that may have been entirely missed by my posts on that thread. I do believe that I understand where you are coming from, and that your argument may be likely to prevail–but we’ll never have the benefit of your insight if you don’t post anything other than regrettable hyperbole, as at 8:23 am.

    Unfortunately, that functionality discussion seems to have been lost in the mists of time.

    I’m still interested in reviving that discussion, if you are–but in a gentlemanly way, of course.

  10. Are you courageous enough to identify yourself (i.e., your real name)? You should be proud to take personal credit for such a lengthy discourse, and of course I’d like to know who you are.

  11. continued…

    Other attorneys I know have had the same types of experiences as I have had with design patents. Many of them dismiss design patents as merely incidental to the “real work” of utility patents, and do not understand that essentially all the subtleties of utility patent applications apply equally to design patents, simply in a different form, or a different language–hence they tend to file picture claims.

    However, the very nature of design patents often means that picture claims are not only justifiable, but that they are the only way to proceed, and are still nevertheless valuable. Everybody files picture claims in design apps at times, and for valid reasons…consider Figure 1 in your D252964, for instance.

    Having said that, they often get the same sub-st@ndard art cited by examiners–totally unrelated and irrelevant. Even a picture claim is amenable to the finding of relevant analogous art, something of which examiners have to me proven themselves incapable again and again.

    Perhaps there are design arts in which certain examiners have particularly good background, history, and knowledge–in looking at some examiner-cited art in some of your apps, I’m actually surprised that you haven’t received more 103 rejections. I would not be so eager to litigate on some of those patents.

    While that observation appears to contradict my earlier point that examiners perform @wful design searches, it reinforces my larger point that examiners in the design units don’t know what they are doing–there is certainly 102/103 material in some examiner-supplied references in some of the granted patents, which in the absence of any such rejection, is also evidence of examiner inc0mpetence, IMO.

    So, as I doubt that you are willing to admit that your claims in D458,455, D458,030, and D457,728–none of which received a single 102 or 103 rejection–are “too narrow”, as you put it, I’m willing to entertain a retraction of your comment at 8:23 am.

  12. continued…

    Thus far, in every design app I have filed except for four, it was known with a high degree of precision what was old in the art–to a vastly higher degree of precision than any PTO examiner has demonstrated to me to be capable of–and claims were drafted accordingly.

    This appears to have been exactly your experience in App 29/152,878, where after it appears that you cited 182 references vs the examiner’s 7 (all of which were US patent documents), the patent was granted without any 101, 102, 103, or 112 rejections.

    I’m sure you would agree that the absence of such rejections is not attributable to the fact that the claim that you filed was a picture claim.

    Of the other four, on one I actually conducted a search using conventional tools and found lots of art; there was also much art to be found in the commons, as the article was a common consumer good. The art cited by the examiner was laugh@ble even compared to the art found using only conventional tools.

    The other three of the four related to sub-components of one article, for which no searching was performed, and which was reduced to practice largely through trial-and-error experimentation in a shop. The examiner-cited art was hil@rious, not even remotely relevant. In those cases there was a level of specificity to the claims somewhere between a picture claim and the other extreme, as is evident from the fact that they were themselves subcombinations. They were most certainly not picture claims.

    This is analogous to what you experienced in having filed App’s 29/152,878, 29/152,898, and D/152,877, which were divisionals of App 29/150,251, which was itself a divisional of App 09/766,703, which was a CIP of App 09/236,794. By the time you got around to filing the divisionals of a divisional of a CIP, the claims were most certainly not picture claims–and yet, all 3 of the divisionals of the divisional of a CIP ultimately issued without a single 101, 102, 103, or 112 rejection.

    I’m sure you would agree that the absence of such rejections is not attributable to the fact that the claims that you filed were picture claims.

  13. Response broken down into multiple posts for practical posting reasons:

    Perry–

    What you just said is laugh@ble and f@cile, for it is easily disproven by reference to some of your own patenting history

    Designs are not something that are readily searchable by a person who hasn’t historically been interested in that area of design. In a very real sense, prior art has to be immediately known, rather than having to be searched-for. To become familiar with a particular body of prior art takes many years of study and interest, and such expertise just is not found among anybody without lengthy experience and an abiding interest.

    The designers with whom I work are experienced in, and committed, to their various fields. They KNOW what is out there, and what has been out there for hundreds of years or more, as do I in one or two areas.

  14. If a patent attorney is not getting a prior art rejection under 102 or 103, your claim is too narrow. Anyone can draft a picture claim and obtain a first action allowance. This goes for utility applications as well as (duh) design applications.

  15. Yes, I’ve received 112 rejections. They were for design patents on shoes. Because of the shape of shoes, it can be difficult to ensure that all of the views are entirely consistent. We had one particular examiner at the USPTO who really had an eagle eye at spotting inconsistencies. The problem with 112 rejections in a design application is that they are very hard to cure. In some cases, we had to file new applications.

  16. Wonder if anyone’s ever received or heard of a 101, 102, 103, or 112 design rejection.

    Anyone ever heard of a design interference? Even allowed?

  17. If design patent examination tends to be essentially a forma exercise, would that make it easier to disqualify a design patent after issuing? If it is unlikely that the prior art had been seen before, I imagine the USPTO would be more willing to disqualify the patent.

  18. You’ll have to excuse my typing. I have also been thinking along another line while typing. Why did I have to Fire just plain people. People that claimed Atty. Status and were just Agents that I never hired as Attys. because of the SAME M O ? Wenzel lied to me by saying just sign and Fax it. How can anyone have taken it from there?
    This is past the Finger this is the from both hands to the Court, and then a shaking fist. And then Larceny too boot?

  19. From an old thread in 2009 at

    link to patentlyo.com

    Dennis–

    My experience is typical–not one rejection for 101, 102, 103, 112.

    I have received objections to drawings, and restriction requirements, but that is it–other than that, a rather expensive registration system.

    You should see what the “examiners” cite as prior art–it is often so far off as to be laughable–like they were trying to put in the file a critical number of references to make it look like they did some work.

    I re-iterate the above comment. Examination of design patent applications is essentially a purely formal exercise.

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