By Dennis Crouch
The chart above shows a histogram of the number of figures included in a set of 90,000 US design patents issued over the past several years. The median number of figures is 7 and the average is 7.3 figures. The typical seven views are typically six orthogonal views and one perspective view. Designs with only one figure are typically surface treatments or screen icons. Microsoft’s recent GUI Design Patent No. D675,221 is shown to the right and appears to show an mapping interface for zooming in and out. In utility patents, the figures are used to flesh-out the disclosure and ensure that the requirements of written description and enablement are met. In design patents, the figures have the additional importance of defining the scope of the patent claim. In that vein, each additional figure may add additional limitations to the scope of coverage.
Hopefully Perry just needs more time to respond.
Sorry, in my haste to post, my 4th last paragraph should have read:
“Of these 3 constraints, it is specificity with which we are concerned in this instance. The general utility (function) of a key blank is well-established–to mate with a keyway of the same shape as the blank. The specific utility (function) of the disclosed key blank is therefore to mate with a keyway of the same shape as the disclosed blank. No other asserted utility would be sufficiently specific to survive 101.”
The function of “a key blank” in the abstract is to operatively engage, or mate with, a keyway having the same shape as the key blank. The function of the disclosed key blank is to mate with a keyway having the same shape as the disclosed key blank. This is the single possible specific function (utility) of the disclosed key blank.
Since the shape of the disclosed key blank is the totality of the design disclosed, any consideration of the function of the key blank MUST include an acknowledgement of the existence of a keyway of the same shape as the disclosed blank, or else the function of the disclosed blank would not be specific.
Furthermore, since mating with a keyway of the same shape is the only possible specific function of which the disclosed key blank is capable, and since that mating depends entirely and solely upon shape, the disclosed shape of that blank can be rightly said to have been determined solely by the requirement that it mate with a keyway of the same shape, and that no other shape would accomplish the specific function required of the key blank.
Notice that the scope of the claim has not been affected by this analysis.
The validity of my position depends upon whether or not you agree with the requirement that the function be specific. Although 101 is viewed by some, perhaps properly, as not applying to design patents, and that design patents arise from only 171, the “functionality” requirement has to come from somewhere.
I must confess to not remembering at this moment from where arises the functionality requirement for the underlying article of manufacture. Although it’s not expressly in 171, “article of manufacture” is. If we are going to import a functionality requirement (as in 101) that is more than just a functional appeal to an aesthetic sense, that requirement should be subject to the same, or similar, constraints to which the 101 utility is subject–specificity, substantiality, and credibility.
Of these 3 constraints, it is specificity with which we are concerned in this instance. The general utility (function) of a key blank is well-established–to mate with a keyway of the same shape as the disclosed blank. No other asserted utility would be sufficiently specific to survive 101.
It follows that the disclosed shape of the blank was determined solely by the requirement that it mate with a keyway of the same shape, and that no other shape would accomplish the specific function required of the disclosed key blank.
The claimed shape of the disclosed key blank is therefore de jure functional, and the patent invalid, as held by the panel majority.
Note one final thing, that the critical element here is the shape of the disclosed key blank–it is the SAME as the shape of the required keyway, and hence the critical element of the extrinsic evidence was actually DISCLOSED in the claim.
So Perry, what about the issue of functionality in Best Lock?
The way we left the debate was with you saying that you were going to “re-educate” us, or myself in particular.
That comment smacked of entirely undeserved arrogance. Not only are you opposing a CAFC majority by siding with a CAFC dissent and a circuit court–you also have not provided any reasoning as to WHY the majority’s opinion should be viewed as deficient or incorrect.
Here it is again in a nutshell: if I may paraphrase, your argument is that undisclosed information should not be “imported into a design patent claim”.
My response was that nothing is imported into the claim, as the claim scope remains unchanged after the consideration of the extrinsic evidence. The use of extrinsic evidence to determine the issue of functionality is entirely appropriate.
In Best Lock, only the key blank was claimed. According to the requirement of de facto functionality, the disclosed key blank must have a function–and here we come to the crux: the characterization of the function.
First, I would point out that de facto functionality requires that it is the function of THE PARTICULAR KEY BLANK DISCLOSED that must be determined–NOT the function of “a key blank” (“any key blank”) in the abstract.
Assuming you agree, let’s move forward.
Perry!
Great to hear from you again.
I know you can’t comment on the case directly, but I’m assuming you have been watching the In re Owens thread. Although you and I may have differing views on some design patent issues, I think there’s one thing on which we can agree: the misunderstanding and marginalization of design patents among both judges and patent attorneys is…well, pick your word.
Of course I listened to the orals in Owens, and was particularly struck by the lack of understanding from the bench of the most basic of drafting conventions.
I don’t think the outcome in Owens will be favorable to your client, and I look forward to the day when we might discuss the issues at bar more directly.
Nice to have you back.
Isn’t it interesting that a design patent post almost invariably morphs into a utility patent discussion?
can you just claim the “front, sides and top and bottom” of an object (without claiming the back, for example?
…draft apps. LOL
Three other letters: BIS
The abridged (and efficient) version:
QQ
Maybe, maybe not. And the patent is getting ready to expire iirc. He was doing this for 8 years and nobody seems to allege that farmer bowman was all “Hey my farmer buddies I figured out a way to get around monsantos nonsensical prices, you guys should get in on this” all over town.
Because, if you had been paying attention, they’re dropping references that THEY SAY are 102’s but then are not. This usually happens on second action when the case would otherwise be ready for allowance. And then they’re like oooooo 102, and of course it isn’t, but it isn’t a bad primary for a 103, so they I get to go look for a secondary. Bottom line, if they’d get their sht together and actually say it is simply good as a potential primary ref then it wouldn’t annoy me half as much as it does. When they say it is a 102b I expect all limitations to be in there, then I go looking through the reference for an hour trying to find the one that is blatantly missing but they said was there. These are big ol’ honking references.
Feel free to name one sovereign function that has been outsourced.
Some dude in India isn’t a member of the united states government.
They already had this discussion, and I couldn’t care less. If they outsource I’ll go be an engineer or draft apps, do something easy for a change.
If Monsanto let it slide, they’d soon have 10,000 farmers infringing, each to the tune of a paltry $100k.
You can omit a view if the relevant surface is flat and unornamented (and you say so in the application), for example the back of a dresser or the bottom of a floor lamp.
Views that are mirror images of a view already provided, or adequately shown in a perspective view, can likewise be omitted.
You are required to “completely disclose” the appearance of the claimed design, so an examiner might ask for additional views if the above exceptions don’t apply.
You want me to list all the functions of this nation that our gov’t has outsourced/contracted out? There’s no legal reason they can’t have some dude in India fill out 102(b)s.
“doesn’t mean that I suddenly did not have to do a thorough search”
So why the QQ at all?
Think a minute before you respond.
LOL – sure, let’s go with that.
“Plus, actually crafting an application versus examining one are worlds apart.***”
Yes, the former is much easier.
Not while it is still a function of a sovereign nation called the US bro.
They didn’t “do my search for me” ta rd. Just because they got lucky with their EPO search and found a good reference doesn’t mean that I suddenly did not have to do a thorough search on the prior first action.
And like I said, their art was not sufficient so I had to find a secondary and that means more searching ta rd.
http://news.yahoo.com/high-stakes-fight-over-soybeans-high-court-140546296–finance.html
An article giving details about the Bowman case.
It is funny to me that Monsanto would risk a huge portion of their business model, and not to mention the safety of many other self-replicating techs being patented for a paltry sum under 100k. I guess they just can’t be bothered to look the other way rather than step into the path of an oncoming train just to get to the other side of the train tracks a bit faster.
Who said anything about being smug?
Plus, actually crafting an application versus examining one are worlds apart.***
***of course the caveat must be made that there is plenty of schlock out there – in fact, we make a good business on intake and salvage of such schlock.
Won’t the same happen to patent prosecutors? I wouldn’t get too smug here.
I think that graph is giving us the finger.
Dennis, how does this compare to the average number of figures in utility patents? Just curious if you’ve studied that as well.
The problem is that he has not complained himself out of a job yet.
Give it time – when all the world’s patent laws are the same, patent examination will just be something that gets shipped off to the lowest cost factor place in the world.
So take the good art and write up a good rejection and be happy they’ve done your search for you. I don’t see the problem.
MD: You know what I ha te? When EPO “great searchers” find a decent reference, stick it in a rejection where they say that one limitation is found in x part of the reference where that limitation is blatantly nowhere to be found and send out their action. Then I get their gr8 search report, see the good art, and the bad rejection, and have to find a secondary reference.
#stupi dfcukingEPOexaminers.
Paul,
Is that ever possible, given that the design patent rights revert to the public (now after 15 years from grant), while the copyright rights are maintained much longer?
Wouldn’t public ownership cancel out any copyrights by default?
Perhaps Perry can chime in….
Yes, President Obama signed the legislation into law the same day as the AIA technical amendments bill (I believe).
Yes, go for both whenever that is possible.
Did the “Patent Law Treaties Implementation Act of 2012” written up on Dec. 5, 2012 by Mr. Crouch get passed in the US?
In his brief write up he noted a change which this law creates: “allowing applicants to include up to 100 different design inventions within a single international design application”.
That should make it even cheaper to protect designs, especially considering the ease of getting an allowance as noted in the “Design Patent Rejections” stats detailed on Jan. 19, 2010…
Well, we’re all infringing it right now. I wonder how much we owe Microsoft for that.
Country to country border height of perspective.
since the boxed design aspects are not shaded, the protection afforded by this design patent is all but worthless.
Without those aspects, the design would be obvious or anticipated (of course, that assumes that these things are examined with anything approachig rigor, which they aren’t).
It’s a pretty wretched design, in any case. What’s that thing in the second box? The “bowtie” view?
You are right Paul, it is a cheap way to get defensive protection.
Curious as to the trade-off with the limited time of this type of protection as opposed to say, copyright.
Your thoughts?
Can you reduce the number of design patent drawings needed if the design application expressly disclaims a back or bottom of the object which does not have any ornamental novelty, or is the design patent examiner going to insist on it anyway?
No, but its a cheap way to get defensive protection with an early effective date for something that will be kept secret for roughly six months or so, before a product launch.
Aside from any functional aspects, and since the boxed design aspects are not shaded, the protection afforded by this design patent is all but worthless.
So Microsoft wanted to pay for this tiny (tiny, really really tiny) sliver of IP. Does anyone really think this pittance is an earth-shattering big deal?
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