Guest Post: Publishing Design Patent Applications: Time to Act

Gary L. Griswold

Mr. Griswold is a Consultant residing in Hudson, WI and was formerly President and Chief Intellectual Property Counsel for 3M Innovative Properties Company. The essay reflects the views of the author. He wishes to thank Bob Armitage and Mike Kirk for their excellent contributions to the essay.

Overview

Design patenting has come of age. According to a recent World Intellectual Property Organization (WIPO) study, the filing of design patent applications more than doubled between 2004 and 2011.[1] The stakes in design patent litigation today can be enormous. One commentator on the recent Apple-Samsung iPhone IP wars noted, “After operating in the intellectual property backwaters for years, design patents took center stage in the epic battle.”[2]

Enterprises of all sizes have come to recognize the value to be had from securing patents on their innovative designs. This also means that more businesses now need to consider whether design patents of others might impair their freedom to operate when placing a new product on the market.

Unlike conventional (“utility”) patent applications, design patent applications are not subject to the “publication” provisions that were placed in the U.S. patent law in 1999 with the enactment of the American Inventors Protection Act (AIPA). Utility patent applications, with a few exceptions, must all be published and made publicly available within 18 months after filing.[3]   However, all design patent applications are required to be kept in secret in the United States Patent and Trademark Office (USPTO) until the patent issues on the application.

Today this secrecy can have significant and negative consequences – for the design’s creator and for those who commit resources to manufacture a similar product before the issuance of the design patent. Unlike most utility patents today, the first inkling that a patent is being sought on a new product’s design may come with grant of a design patent, in other words come at the end of the examination process in the USPTO.

The growing importance of design patents suggests that this exclusion from publication with respect to design patent application publication should be rectified by Congress. This can best be done by requiring that all pending design patent applications be made available to the public by publishing these applications at 6 months after the date that they were originally filed.

Doing so would put the public on notice, shortly after the design patent application is filed, that a new product’s design may be protected. The growing prominence of design patenting, as well as other developments in the law since 1999, now make it timely for Congress to act.

Background

Two major pieces of patent legislation over the past 15 years have worked to make the U.S. patent law operate with vastly greater transparency, predictability and simplicity. The AIPA, with its requirement that most new non-design patent filings must be published at 18-months after their original filing dates was followed by a host of even more significant patent reforms. These were contained in the Leahy-Smith America Invents Act (AIA) of 2011.[4]

Key provisions of the AIA were designed to allow inventors to accurately assess whether they could secure – or had secured – a valid patent. For utility patents, access to earlier-filed patent applications comes though the AIPA’s publication provisions. Clearly, since some patents can take years to issue, holding earlier-filed patent applications in secrecy in the United States Patent and Trademark Office (USPTO) until a patent issued meant that an inventor might mistakenly invest based on the apparent validity of a patent that might then evaporate upon the issuance of a patent on a never-published, earlier-filed patent application.

The AIA also sought to assure that members of the public could more effectively participate in the patenting process. It allowed members of the public to be involved in the determination of whether a claimed invention in a patent application can be validly issued as a patent, both before the patent issues and after the patent issuance.

If action is taken promptly after a pending patent application is published, the AIA permits a member of the public to make a “pre-grant submission” of relevant prior art that the patent examiner handling the patent application must consider in deciding whether a patent should issue on the application.[5] These submissions, most notably include the earlier-sought patent applications of other inventors that have been published under the AIPA’s provisions.

In addition, the new “post-grant review” or “PGR” provisions of the AIA permit a member of the public to raise in a USPTO proceeding any issue of a patent’s validity that could be raised in court by someone accused of infringing the patent. However, these PGR provisions, like the pre-grant submission provisions, require that an individual act promptly. In this case, the PGR petition must be filed within nine months of the issue date of the patent that is being opposed.

Given the formidable requirements for requesting a PGR, most individuals making a PGR request will benefit from advance notice that a patent is about to issue. This notice, of course, is automatic when the patent application has been published under the AIPA’s provisions.

The manner in which the AIA built upon the AIPA’s provisions, both with pre-grant submissions and with post-grant review, work to benefit patent owners and their potential competitors alike. However, while these new pre-grant and post-grant provisions technically apply both to design and utility patents, the lack of any “publication provision” for design patents means that these provisions are now significantly less effective for designs.

The Rationale for Excluding Design Patents from the AIPA Publication Provisions No Longer Makes Sense

When the AIPA was enacted, there were two significant exceptions to the rule that pending applications for patent would be published and made publicly accessible. First, these provisions allowed inventors seeking only U.S. patents to opt-out of the publication requirement. This was done for inventors interested in patent protection only for the U.S. market on the assumption that at least some of them might not want their inventions publicly disclosed if they were ultimately not going to be able to receive a valid patent. However, for almost all such inventions, marketing the invention necessarily discloses to the public what the invention is and, in fact, discloses much more about the invention to the public than would normally be found in an inventor’s patent application if published.

Thus, this rationale, particularly today, makes little sense. The inventor can be “protected” from public disclosure by opting-out of the publication provisions of the AIPA only in the situation where the invention is never commercialized and essentially has no economic value, or in the limited situations where the invention can be effectively practiced as a trade secret. Consequently, it is a protection that seldom affords any economic value to the inventor.

Under the AIA, the publication of an invention in a pending patent application provides an inventor with a guarantee that no one else will be able to successfully secure a patent on the same or a similar invention based on an application filed after the inventor’s patent filing. Where someone subsequently files for a patent, the earlier-filed application limits the later-filing inventor to validly patenting only subject matter both novel and non-obvious over what was disclosed in the earlier-filed application.

Design patents were totally excluded from the 18-month publication provisions. The rationale for the design patent exclusion can be found in the legislative history of the AIPA: “Since design applications do not disclose technology, inventors do not have a particular interest in having them published.” That statement, whatever its validity then, was made before design patenting came of age and has little relevance today, as evidenced by the litigation between Apple and Samsung.

Another reason given for the design exception was that “The Hague Agreement Concerning the International Registration of Industrial Designs” was being revised and that any change to the design patent law should await the outcome of that exercise. That outcome is now clear; Congress has acted to remove the exception for design patents filed under The Hague Agreement.[6]

Yet another reason that design patents may have been left out of the mix when the publication provisions of the AIPA were being drafted was the short pendency of a design patent application. “Pendency” is the time taken by a patent examiner between filing and issuance of the design patent. With pre-grant submissions of prior art and post-grant review under the AIA now in place, that relatively shorter pendency before the Patent Office for design applications versus utility applications makes it much more important to have design applications not only published, but published quite promptly, i.e., at six months from the patent filing.[7]

The last reason Congress may have excepted design patents from publication is that some manufacturers may not have wanted the designs for new products to be prematurely disclosed, prior to market introduction.[8] Under the AIA, however, the filing of a design patent application assures that no similar designs can be patented based upon a later-filed design patent application. In addition, early publication puts competitors on notice that there is a “patent pending” on the design so that they dare not copy the design without the risk of infringing a subsequently issued design patent. Instead of a problem for manufacturers, pre-grant publication carries with it undeniably important benefits.

In addition to the “notice” function that arises from publishing a design patent application, inventors whose design patent applications publish secure yet another benefit under the AIPA. They can qualify for “provisional rights” – that is the right to collect reasonable royalty damages from anyone who uses the design during the period from the date the user received notice of the published design application until issuance of the patent on the design.[9] This again reflects the upsides of publication, much potential gain with a negligible prospect of incurring any pain.

Conclusions

The AIA increased the openness and transparency of the patent system by providing for pre-grant submissions and post- grant review. These provisions work to protect the public against patents that lack valid claims – and similarly protect the inventor from making investments in reliance on patents that could never be successfully enforced. Those aspects of the AIA are premised in part on the publication of pending patent applications.   Whatever reasons can be cited for excluding design patent applications from these important provisions of the AIPA, such reasons now have only historic significance. Today, all design patent inventors deserve equal treatment. The availability of the benefits of publishing pending design patent applications should not depend on where a design patent inventor seeks patent protection.

In sum, the agreement to allow publication of design patent applications filed by U.S. inventors under The Hague Agreement represents a significant step by the United States toward achieving the open, transparent 21st century patent system contemplated by the AIPA and AIA. The increase in design patent application activity – and the prominence of design patent enforcement efforts – renders this a perfect time to remove the exclusion from publication of those design patent applications filed only in the United States.

 

[1] According to WIPO, in 2012, “the 1.22 million industrial designs contained in applications grew by 17%—the highest growth on record.” http://www.wipo.int/export/sites/www/freepublications/en/statistics/943/wipo_pub_943_2013.pdf, at p. 4.

[2] See http://designpatentattorney.com/wp-content/uploads/2013/01/Carani-Lanslide-Article-Design-Patents-Take-Center-Stage-Jan-Feb-2013.pdf.

[3] Most utility patent applications must be published under the AIPA’s publication provisions. The time period set for publishing utility patents is 18 months after the initial patent filing date. 35 U.S.C. § 122(b).

[4] The United States adopted a so-called first-inventor-to-file system as the principle for determining what subject matter can represent “prior art” to a claimed invention. Also, a number of subjective and non-transparent aspects of the rules on patenting were removed.

[5] Because prior art can be submitted to the USPTO anonymously, members of the public and competitors of the applicant are normally comfortable in making such submissions. Since the processing time is shorter for design patent applications than that of utility patent applications, a narrower time window (e.g., before the earlier of a notice of allowance and the later of (1) the first rejection or (2) 2 months after publication) would be necessary for submitting third party submissions.

[6] The implementing legislation for the Geneva Act of The Hague Agreement has been enacted by the United States and rules for its implementation are being finalized by the USPTO. Once the rules are completed, the formal process for membership will be initiated and completed. The Common Regulations Under the 1999 [Geneva] Act and the 1960 Act of The Hague Agreement provide for publication of international applications six months after the date of the international Registration (which occurs upon receipt by WIPO of the international application). This publication of the international application will be considered a publication in the U.S. under 35 USC 390. The U.S. will not allow deferral of publication. Thus, any concerns related to the early publication of design patent applications as a policy matter have already been decided by Congress in favor of publication.

[7] As with utility patent applications, the public may well be aware of better prior art for design patent applications than the USPTO. If design patent applications were published, interested members of the public could submit prior art to the USPTO with the result that any issuing design patents would have been more thoroughly examined, benefiting both the applicant and public.

[8] Because of the speed of issuance, design applications filed only in the U.S. would need to be published 6 months after their U.S. filing date. Any concern with timing of publication relative to commercialization would seem to be handled by a 6 month period between filing and publication, which mirrors The Hague Agreement, and the relatively rapid grant (typically 15 months) of design patents.

[9] By providing that publication under The Hague Agreement will be deemed a publication under 35 USC 122(b), the implementing legislation (35 U.S.C. 390) makes such design patent applications eligible for provisional rights under 35 USC 154(d).

99 thoughts on “Guest Post: Publishing Design Patent Applications: Time to Act

  1. It is worth noting that it is practically considered a fait acompli that the Government should take its Quo and only (merely) promise to consider giving the Quid.

    Notwithstanding its subtlety, this is an extreme and unnecessary rewriting of the fundamental building block of the patent system and changing of the Quid Pro Quo.

    Not all that surprising, one can also trace back the start of the serious deficiencies in examination to this change in Quid Pro Quo. After all, if the public – through the taking of the government and the publishing of the shared knowledge happens prior to grant (the Quo fully obtained), why should the government then hurry and provide the matching Quid to inventors? What is left for inventors to barter with? One side has everything that that side could ever want. The disparity is almost as alarming as the lack of recognition of this disparity.

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  2. Independent of the merit of the positions of this paper, I think that it is interesting that they happen to align perfectly with the current lobbying effort of Samsung. it is well known in the design patent community that Samsung has hired a lobbyist group to advocate these same positions and is pushing hard on the hill as well as all of the IP industry organizations. It makes me wonder whether “consultant” means the same thing as lobbyist and whether this paper was funded by Samsung or their lobbyist group. It would be nice if Mr. Griswold would disclose whether this is his own work or a work for hire.

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    1. Note too the Armitage angle – Mr. Armitage was deeply “involved” in the lobbying efforts pushing the monstrosity of the AIA.

      Can you say “agency capture?”

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      1. “Bob Armitage and Mike Kirk”

        The link to the AIPLA is apparent.

        Griswold, Armitage, Kirk were all involved in lobbying the prior user right issue and publication of patents issue back when I was involved with the AIPLA. They (we) were successful then.

        This same crew is behind the most recent effort.

        My only point is that it does not go far enough in harmonizing with Europe. See my other posts on this.

        That said, I have always been against some aspects of the AIA for reasons previously stated. I have come to be against reexaminations and IPRs for different reasons — experience.

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        1. Fingerprints of guilt and the leanings towards a ‘one-world-patent’ as these are the machinations of the Far Right and the large multi-national corporation.

          You should be ashamed of your role in these efforts Ned.

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  3. Maturity check:

    Yawning A hole
    ga ping a xx hole

    Because this person wants things to be grown up (like him)…

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  4. Examine and issue the applications quicker — that is the solution.

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    1. I agree Fish, the whole system should have never been setup such that a backlog of over a few weeks to a month could ever accrue. Both for design or utility. And not only that, there should be a window where you can just come right up, submit your app, and have it examined while you wait. You’d pay a premium for such a service though of course.

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      1. (6 is confused with his last major job and continues to ask “Do you want fries with that?”)

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      2. “few weeks to a month”? Average pendency should be less than a year, and not 16 months IMO.

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  5. One of the primary purposes of pre-grant publication under AIPLA (1999) was harmonization with ROW which DOES publish patents pre-grant — even back in 1999, very few countries allowed one to file for a patent without pre-grant publication (the countries the come to mind are New Zealand, Israel and Jordan) at 18 months.

    This is NOT the case for designs. For example, OHIM (Europe) allows for deferring publication up to 30 months (!!) after the priority date.
    In Japan, an applicant can request that a design be kept secret for a period of up 3 years after the registration has been granted.

    QUESTION — how come this issue is not addressed in the article? I would think that this issue is CENTRAL since the author alludes to harmonization with other countries.

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  6. Griswold et al: With pre-grant submissions of prior art and post-grant review under the AIA now in place, that relatively shorter pendency before the Patent Office for design applications versus utility applications makes it much more important to have design applications not only published, but published quite promptly, i.e., at six months from the patent filing.

    This makes a lot of sense. Here’s hoping Congress steps up and does the right thing in the next round of patent reforms. Getting rid of the presumption of validity for design patents would also be a great way to inject some sanity into the US design patent system which is even more broken than the utility patent system ever was (who’d have thought that was possible?).

    Kappos is a big proponent of design patents because he’s a lawyer and he knows that it’s a swamp overripe with money-milking possibilities for IP litigators (especially those who lack the brains to process anything more technical than your typical computer-implemented hoohaw).

    Thank goodness the Federal Circuit, at least, seems to have had enough sense to begin plugging some of the ridiculous “written description” loopholes (see, e.g., In re Ownens link to patentlyo.com) created by indefensible previous decisions and a patent office that was all-t00-willing to coddle its “clients”.

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  7. Griswold writes: ” inventors whose design patent applications publish secure yet another benefit under the AIPA. They can qualify for “provisional rights” – that is the right to collect reasonable royalty damages from anyone who uses the design during the period from the date the user received notice of the published design application until issuance of the patent on the design.”

    This kind of language appears in the statute for utility patents now, but I don’t think it has any efficacy. Can anyone point to a case where the patentee has been granted pre-issuance royalties? I am not aware of any.

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    1. The “get as claimed” was a lure to allow pre-issue publication.

      What is so often not recognized, is that publication is basically ALL that the Office really wants out of the Quid Pro Quo agreement, and any notion of publishing prior to obtaining the grant of a patent right is an automatic “win” for the patent office.

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      1. “and any notion of publishing prior to obtaining the grant of a patent right is an automatic “win” for the patent office.”

        Yep.

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    2. Designs should be registered, then made subject to cancellation proceedings like trademarks.

      3 months from filing to publication should be statutorily imposes.

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      1. Published, subject to opposition, then registered, like trademarks.

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          1. Have you come up with a name other than patent yet…?

            Registered design.

            And no presumption of validity, and plainly a working requirement would be necessary for enforcement, otherwise the usual grifters will be a-rushing in with their stockpiled j nk.

            How many design patents does Intellectroll Ventures own, by the way? Anyone know?

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            1. Well I am glad that you recognize (?) several aspects of non-patent law differences, being presumption of validity and working requirement.

              Maybe Mr. Hyatt knows about IV…

              ;-)

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  8. For my own practice this is what I’ve seen. Companies wanting design patents to protect their designs. Much of this seems to have been gen erated by the Apple wins. Makes me very nervous. It is tough to advise clients on design patents given how shaky the whole body of law is on design patents.

    What do you say to the client that wants to file 5 design patent applications to cover one of their products? Is it worth it? I feel like I need to take a CLE on this to get up-to-date on the changes. I also feel like no one is really sure what to say to the client. Do you say, well, you can file the patent applications. We may get them and if we put $5 million in litigation we may win.

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    1. And the remarkable thing about Apple design registrations and their effectiveness is that the designs they protect are the antithesis of “design”. Their individual character and identity stems from the astonishing absence of any detail of product shape or configuration that you can focus on.

      No wonder other manufacturers want design registrations for their products, given that the products they have are ones that exhibit far more design detail than in any Apple design. If Apple can make them pay, with their non-designs, how much more will the patents pay, when protecting a real design.

      But as Night surmises, the actualite is the opposite.

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        1. OT, but more bad news from the Chisum Academy. Sounds like the death squads are a live and well in the PTO lead by their leader CJ Smith.

          ▪ Inter Partes Review: Where Are We So Far? Hundreds of IPR petitions are now flooding into the PTO each month. Initial readings of PTAB IPR decisions suggest that the Board responds to obviousness challenges far more favorably would than lay jurors. For example, the Board gives minimal weight to secondary considerations evidence. The PTAB is quite comfortable in construing a patentee’s statements in foreign prosecution or litigation proceedings (parallel, related, or not) as admissions against interest, even when such statements do not appear to qualify as prior art. The PTAB is heavily influenced by patentee concessions that all elements of a claimed invention can be found in the prior art (despite the lack of persuasive reasons for combining the prior art teachings).

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          1. It sounds like the Board is doing a great job cleaning up the mistakes made the first time around. Kudos!

            FYI, this talk of “patent death squads” makes you sound like a hysterical id i0t. Why do you want to quote a disgraced Federal judge anyway?

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  9. I was startled to read Griswold’s:

    “…pre-grant submissions and post- grant review. These provisions work to protect the public against patents that lack valid claims”

    Can that be right? In what sense are these provisions doing anything that rises to the level of “protecting” the public?

    I can see that they are one more weapon for those threatened (or about to be threatened) with proceedings for infringement of a duly issued presumed valid claim. But that covers only the tiny number of parties who have done a clearance study. This is a vanishingly small portion of “the public”.

    If “protection” is what the public needs, it should be provided by the USPTO, taking care what claims it allows through to issue. This is no way to finesse out of that responsibility.

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    1. >If “protection” is what the public needs, it should be provided by the >USPTO, taking care what claims it allows through to issue. This is no way to >finesse out of that responsibility.

      This is exactly right and the proposed new fee for expedited appeal is just another example of “finesse out of that responsibility” that the PTO has become so expert at.

      To my mind, a big problem we have is that almost none of the Google shills have any real experience with patents. So, they don’t have a clue what examiners actually do. And, the KEY to the entire problem is figuring out how to get the examiners to examiner better–and not with ’cause arguments.

      (I will note that universally from my exposure to examiners that they feel the IPR is a joke. That if you are reversed by an IPR that means nothing. That the APJs are just creating ’cause arguments. In other words, the justice system produces no confidence vote from the examiners. What a surprise.)

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    2. Max, did you note the sophist’s clever use of “that lack valid claims?”

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      1. How is that sophistry, Ned?

        Either a granted patent lacks valid claims or it does not.

        If it does not, but someone has a reasonable belief that it does, then that it what the post grant mechanisms (including litigation, the very first post-grant mechanism) are for.

        The real issue (and one seemingly swept under a cloud of dust kicking) is why patents are granted without having valid claims.

        There will always be “the close ones” that show up as a reasonable percentage of ‘found invalid’ claims in either litigation or post grant reviews.

        But the emphasis should be (and is mightily resisted by certain small circle blog regulars) on better examination in the first place.

        As it turns out (and I am sure that you can agree with this sentiment), post grant mechanisms are a poor answer to simply doing the job right the first time around, as they are prone to the type of abuse that denigrates the entire patent system, and breed a mindset that ALL patents must be bad.

        What is more in line with sophistry is not “that lack valid claims,” but rather “answers” that “lack focus on better examination in the first instance.”

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      2. “Lack valid claims.”

        Again. Huh? Is he talking about patents that have 101 problems. Otherwise, the typical problem with patents is the breadth of their claims that read on prior art. There usually are valid dependent claims, or subject matter that can be amended in.

        Scope is the real problem with most patents.

        The one’s that do not disclose valid subject matter are the ones that will not have valid claims. But PGRs and IPRs were not enacted to address 101 problems. They exist to address, primarily, prior art that the examiner did not find.

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        1. PGRs and IPRs were not enacted to address 101 problems.

          That was a mistake on the part of the drafters of the AIA.

          They exist to address, primarily, prior art that the examiner did not find.

          Right. The problem, of course, is that subject matter eligibility will always be tied up with the prior art for reasons that we’ve discussed endlessly here. It makes absolutely no sense to remove 101 considerations from PGRs and IPRs.

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          1. MM, Let us hope litigators reading here get the idea that 101 is entirely viable in IPRs by not giving weight to ineligible subject matter. Alice then could have an amazing effect.

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              1. Billy: the ends justify the means

                Of course Billy never complained about the “ends justifying the means” when the Federal Circuit “conflated” 101 with 103 to created the “don’t give patentable weight to ineligible subject matter” doctrine.

                That’s because faux-“principled” whiners like Billy only get upset when it’s their j nk claims that are getting tanked.

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              2. LOL – are you talking about the reeling back in of a judge-made doctrine to begin with, pumpkin?

                (you really should try to know what you are talking about)

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            1. 101 is entirely viable in IPRs by not giving weight to ineligible subject matter. Alice then could have an amazing effect.

              Alice wasn’t necessary as this “not giving weight to ineligible subject matter” doctrine pre-dates Alice by many years. The bigger question is whether Prometheus and Alice have destroyed the viability of the doctrine which is, after all (and admitted as such by the Federal Circuit), nothing more than the importation of 101 considerations into 103.

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              1. nothing more than the importation of 101 considerations into 103.

                Um, do you even have a clue where 103 ge nerated from…?

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              2. do you even have a clue where 103 ge nerated from…?

                Please tell everyone “where 103 ge nerated from”, Professor Billy.

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              3. Um, asked and answered Malcolm – see any number of posts wherein I discuss the Patent Act of 1952.

                Pay attention.

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              4. see any number of posts wherein I discuss the Patent Act of 1952.

                We all know 103 was written and passed by Congress, Billy.

                Surely that’s not the point you were trying to make when you spewed out your drivel about “where 103 ge nerated from”?

                Step up, Billy. Tell everyone what your driving at in plain English. Ask your mommy to help you.

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              5. Brilliant Malcolm. I never thought of the EPO’s way with novelty and obviousness to be “the importation of 101 considerations into 103″ but that’s about what it is. There are many aspects to inventiveness but, in patent law, only one of them counts, namely inventiveness within the rubric of the “useful arts” All the other aspects should be given no weight under 35 USC 103.

                In the context of 35 USC 103, has this thought ever before been ventured, I wonder?

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              6. Open your eyes Malcolm – what were the issues driving the creation of 103.

                Step up to the plate, little one.

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              7. what were the issues driving the creation of 103

                You tell us, Billy. You’re the “expert”.

                Of course, anybody could just look up the answer. But it’s funnier to hear you talk about it, you silly nxtcase.

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              8. MD: In the context of 35 USC 103, has this thought ever before been ventured, I wonder?

                Of course it has, MD. For example:

                Prometheus Laboratories is a § 101 case that limits the reach of patentable subject matter, whereas the contemporary core of the printed matter doctrine is grounded in both the novelty provision of § 102 and the closely allied nonobviousness provision of § 103. This
                statutory divide, however, is arbitrary. The conventional
                classification system within patent law that separates
                Prometheus Laboratories and the printed matter doctrine into
                hermetically sealed boxes needs to be reconsidered. The arbitrariness of the statutory divide is evident within the printed matter doctrine itself because, beyond the doctrine’s contemporary core, there is an internal split in its own statutory grounding. Two different types of printed matter cases are associated with two different statutes in the Patent Act, despite the fact that the two types of cases use identical reasoning. When brought to bear on claims to printed matter per se in many older cases, the printed matter doctrine is classified as a facet of the
                § 101 doctrine of patentable subject matter. For example,
                although they have physical materiality, books are not within the statutory meaning of “manufactures” in § 101. In the core of its contemporary applications, however, the printed matter doctrine has been used to scrutinize the patentability of claims to traditionally patentable objects and methods that include
                printed-matter limitations.

                Lots more from Kevin Collins’ seminal article here:

                link to papers.ssrn.com

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              9. Yet another question put to Malcolm for which he runs away, yelling out over his shoulder (as he retreats), “just look up the answer”

                LOL – step up Milly.

                If you dare.

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              10. MM, agreed about the printed matter doctrine. See, e.g., King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010), where the unpatentable step of informing was given no weight and the statutory subject matter was held to be anticipated — the claims held invalid under 102.

                Never reached 103.

                But I truly have to caution you that the printed matter doctrine came from Hotel Security and Guthrie v. Curlett, the latter cited by In re Russell, the first CCPA printed matter case. But the Hotel Security was overruled by State Street Bank, and despite a strong dissent in Bilski by Dyk to overturn State Street Bank, it was not overturned, and Stevens concurring opinion in Bilski,where he wanted to overrule State Street Bank and restore Hotel Security and Guthrie v . Curlett, was not adopted.

                But we see that their approach is still followed in the Federal Circuit in cases like King Pharma albeit they have not considered the ramifications of State Street Bank and Bilksi.

                That is why Prometheus and Alice are so very important. The have restored the notion of Hotel Security and its progeny that non statutory subject matter must be given no weight in novelty analysis. That is why I say that Stevens and Dyk both won the war even while losing a skirmish in Bilski.

                The general approach has been long in use by the CCPA/Fed. Cir. and now clearly by the Supreme Court. Where the novel subject matter is non statutory, the claim is unpatentable under 102 because the nonstatutory subject matter is given no weight.

                But the recent King Pharma case is the authority they need for IPRs.

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              11. MM, agreed about the printed matter doctrine. See, e.g., King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010), where the unpatentable step of informing was given no weight and the statutory subject matter was held to be anticipated — the claims held invalid under 102.

                Never reached 103.

                But I truly have to caution you that the printed matter doctrine came from Hotel Security and Guthrie v. Curlett, the latter cited by In re Russell, the first CCPA printed matter case. But the Hotel Security was overruled by State Street Bank, and despite a strong dissent in Bilski by Dyk to overturn State Street Bank, it was not overturned, and Stevens concurring opinion in Bilski,where he wanted to overrule State Street Bank and restore Hotel Security and Guthrie v . Curlett, was not adopted.

                But we see that their approach is still followed in the Federal Circuit in cases like King Pharma albeit they have not considered the ramifications of State Street Bank and Bilksi.

                That is why Prometheus and Alice are so very important. The have restored the notion of Hotel Security and its progeny that non statutory subject matter must be given no weight in novelty analysis. That is why I say that Stevens and Dyk both won the war even while losing a skirmish in Bilski.

                The gen eral approach has been long in use by the CCPA/Fed. Cir. and now clearly by the Supreme Court. Where the novel subject matter is non statutory, the claim is unpatentable under 102 because the nonstatutory subject matter is given no weight.

                But the recent King Pharma case is the authority they need for IPRs.

                Reply
              12. More over reading from Ned.

                That is why Prometheus and Alice are so very important. The have restored the notion of Hotel Security and its progeny that non statutory subject matter must be given no weight in novelty analysis. That is why I say that Stevens and Dyk both won the war even while losing a skirmish in Bilski.

                Ned, 4 is not 5.

                As well as, 3 is not 5.

                Reply
    3. MD “…pre-grant submissions and post- grant review. These provisions work to protect the public against patents that lack valid claims”

      Can that be right?

      As a member of the public, it seems perfectly right to me. The PTO makes mistakes and grants invalid patents. Every such mistake harms the public because it takes away the public’s right to freely engage in acts they would otherwise be free to engage in.

      The provisions that were identified in your comment work to fix some of those mistakes.

      In what sense are these provisions doing anything that rises to the level of “protecting” the public?

      In pretty much every sense imaginable.

      Reply
      1. How very “the-only-valid-patent-is-one-that-has-not-yet-appeared-before-us” of you.

        History repeats.

        Reply
      2. Malcolm I regret that you don’t follow my thinking. PGR is not self-enacting. Nor is it declaratory of what is not fit to grant. It simply sets up one more way (in addition to those already available) for interested parties to put validity in issue. That, for me, adds very little, if anything, to the totality of the public’s “protection” from the phenomenon of bad patents.

        Compare “protection” against being mugged on the street. The Government starts offering to sell 100 pound weight baseball bats to anybody who wants to buy one. Is that “protecting the public” to any significant degree?

        Reply
        1. It simply sets up one more way (in addition to those already available) for interested parties to put validity in issue. That, for me, adds very little, if anything, to the totality of the public’s “protection” from the phenomenon of bad patents.

          I’m all for adding more, MD.

          Compare “protection” against being mugged on the street. The Government starts offering to sell 100 pound weight baseball bats to anybody who wants to buy one. Is that “protecting the public” to any significant degree?

          Not really, but you’re talking to someone who lives in a country where violent white supremacists who can barely spell their own names are sitting on massive stockpiles of assault weapons because “right to defend yourself.”

          A better analogy would be to presume a hypothetical country where, as a practical matter, only a tiny fraction of wealthy people can apply for and purchase rights to access other people’s bank accounts withdraw money. The public complains about the abuse of that right and so the government begins to provides the public with numerous different ways to fight back.

          We know how that tiny fraction of wealthy people is going to respond. They are going to weep and cry because they think they are really sooper important and they are going to whine that nobody understands them or their sooper important role in the turning of the Earth.

          That tiny fraction of people used to be able to do that in a vacuum. That’s marginally more difficult now, thanks to the Internet. Why do you think Billy & Co. spend so much time here accusing everyone interested in patent reform of being a “communist” or a “ra pist” or worse?

          Reply
          1. that’s a lovely fantasy Malcolm, so full of anti-“grifters” or some such thing.

            /eye roll

            Reply
          2. …and (supposedly), you make your living creating property for this class of people that you despise…

            No wonder then, the cognitive dissonance destroys your mind.

            Reply
  10. As MaxDrei points out, the US is way out of step on design patents.

    We need a simple registration system where examination is formal. From filing to publication by grant should be no more than a few months. We need this limited by statute so that in X months (let’s say 3) after a product issues and a design patent covering the product in not registered, a rival might know that the design might be copied.

    The primary defense to a design patent should be lack of knowledge of the rival’s design before one’s own design was adopted. Independent development of identical designs should be permitted prior to the grant of a design patent.

    The other defense should be that the product covered by the patent was disclosed before the design patent application was filed.

    Reply
    1. independent development…

      Let’s not call that thing you want a patent.

      The other defense should be that the product covered by the patent was disclosed before the design patent application was filed.

      That exists now. It is called prior art.

      Reply
    2. To clarify, I am arguing

      1. To eliminate the grace period for designs; and

      2. For a prior user right based on independent development.

      3. Publication at 3 months.

      Reply
      1. Again, what is this with the “independent creation” defense?

        You want something other than a patent – CALL it something else.

        Reply
  11. Is it really the case that the availability of design patents is a needed spur to innovative industrial design? If we simply did away with such patents entirely, would design work come to an end? The fashion industry seems not to want for innovative design, even though as a practical matter, there are no design patents on fashions.

    Reply
    1. Egon, designs should protect against copying by competitors.

      Reply
      1. Gee, maybe like a copyright… (and hey, copyright law already has that independent creation thingie you are hunkering for)

        Reply
  12. “Since design applications do not disclose technology …”

    Meaning, of course, that — unlike design applications — the legislature has explicitly admitted, conceded, and indeed endorsed the fact and legal principle that … utility applications / patents DO disclose technology.

    Accordingly, all utility application and patents solve technical problems utilizing technological solutions … and therefore pass 101.

    Abstract or not.

    Like it or not.

    Reply
    1. “Accordingly, all utility application and patents solve technical problems utilizing technological solutions … and therefore pass 101.”

      Wuuuuuut? Just because you scribbled something down on a piece of paper and submitted it as an app means that what you scribbled solved a technical problem utilizing technological solutions? Srsly?

      Reply
  13. The rationale for the design patent exclusion can be found in the legislative history of the AIPA: “Since design applications do not disclose technology, inventors do not have a particular interest in having them published.”

    That’s true of a lot of computer-implemented j nk out there which describe the use of an old programmable computer for receiving, storing and/or transmitting “new” information (where “new” equals, e.g., “real estate availability” or “Johnny’s credit card accessibility”. No wonder the folks who love those kind of patents would rather not publish them.

    Reply
    1. Yet another attempt at a thread hi jack ing by MM. This is about design patents … not computer-implemented inventions.

      Reply
      1. Together you’ve doubled the number of comments on the issue I raised so the subject is presumably of interest to you both.

        I just found the justification, given by the drafters of the AIA, for the lax rules regarding publication of design patents application (“design applications do not disclose technology”) to be odd. It seems to me the authors of this article are also suspicious. What is about patent applications concerning “technology” that justify their publication after 18 months which don’t apply to design patents?

        I believe the authors of the piece are similarly baffled.

        I also question whether, in fact, many design patents are not equivalently “technological” to many utility patents. Design patents covering new images displayed on screens don’t seem any less technological than claims to methods of displaying images on old computer screens, certainly not when the claim does no more than describe that image (usually in less detail) than the design patent.

        Reply
        1. Together you’ve doubled the number of comments on the issue I raised

          The issue you raised has nothing to do with this thread.

          so the subject is presumably of interest to you both.

          Our interest is in having you NOT hijack the thread.

          Pay attention.

          Reply
          1. The issue you raised has nothing to do with this thread.

            It certainly does, Billy, as one of the issues that was raised is the relationship between the disclosure of “technology” in a patent application and the publication of that application prior to grant.

            But do keep digging, Billy. It’s what you do best.

            Reply
            1. LOL – and once again a lovely AOOTWMD with Malcolm firmly grasping the shovel in the bottom of his ever deepening hole.

              Reply
  14. Design patents are never going to “come of age” until we have a robust, rational system for examining applications for design patents.

    In the meantime, we can all watch the sorry spectacle of former directors of the PTO — who did nothing to improve the quality of design patents — preaching about design patents being “the wave of the future” so you better get on board, or get sued.

    Where have we seen this story before?

    Reply
    1. In the meantime, besides a mindless rant, how about a suggestion for this “robust, rational system for examining applications for design patents” – or do you just want to try to denigrate Kappos some more?

      Reply
    2. who did nothing to improve the quality of design patents
      OMG … were you just criticizing the USPTO?

      who did nothing to improve the quality of design patents
      What are YOUR suggestions for improving examination?

      preaching about design patents being “the wave of the future”
      I don’t recall anybody preaching about design patents being the wave of the future.

      Reply
      1. Yawning Piehole: I don’t recall anybody preaching about design patents being the wave of the future.

        Your li’l buddy Billy (aka “anon”) seems to remember. Maybe try the Google.

        What are YOUR suggestions for improving examination?

        I’ve published suggestions here numerous times and specifically for design patents. Check out pretty much any other previous thread on design patents and you’ll run into them.

        One major task is to prepare a database of designs, searchable by the design itself, in addition to keywords. The database would include design images found anywhere on the Internet, including designs found in the massive reams of books that have been published on the history of art and design of both commercial and ornamental objects. In addition, Examiners would be required to have a relevant background in commercial design and/or advertising so that they have some clue as to what’s been done before and they know where to look.

        Of course, a coherent and rational and particlarized approach to obviousness in design patents also needs to be developed. In that regard, design patents are about 50 years behind KSR.

        Without this, then we can rest assured that design patent “examination” is a complete joke and the silly presumption of validity which applies to utility patents should not apply to design patents.

        By the way, it’s noted already that the same folks who love their j nky computer-implemented and software patents are the the ones who’s fur gets really rankled, in the exact same way, when the U.S. design patent system is criticized. Nobody should be suprised by that, of course, because it’s the same class of grifters and the same scheme being manipulated.

        Reply
        1. Hint: the common denominator is you and your anti-patent fervor.

          Get a clue.

          Reply
          1. Thanks for proving my point, Billy.

            Next you’ll accuse me of being a “communist”, too, because I’m critical of the US design patent system. Or maybe you’ll launch into some diatribe about how I don’t “understand” designs and how anybody who shares my views must want to live in a drab world without designs. Or maybe you’ll just spin your insult wheel again.

            Surprise everyone, Billy.

            Reply
            1. Your needing a clue is proving your point….?

              Um, sure, yeah, yeah, let’s go with that…

              /eye roll

              Reply
        2. One major task is to prepare a database of designs, searchable by the design itself
          Too bad your lack of understanding regarding the limitations of current computer software causes you to fail to appreciate how difficult a task that is. Also, design features are less amenable to written description than functional features. Combine that with the lack of a written specification and it is easy (for most) to see why it is hard to examine these types of patent applications.

          By the way, it’s noted already that the same folks who love their j nky computer-implemented and software patents are the the ones who’s fur gets really rankled, in the exact same way, when the U.S. design patent system is criticized.
          Hardly, I don’t know of anybody making a lot of effort to defend design patents. Personally, I haven’t applied for (or obtained) a design patent for a client in probably 8 years. I don’t see a lot of value in them. However, the law permits their existence so for those that want to take advantage of it, go right ahead.

          Examiners would be required to have a relevant background in commercial design and/or advertising so that they have some clue as to what’s been done before and they know where to look.
          LOL … like someone in the field would say … oh wait, I’ve seen this before … its on page 10 of this trade magazine dated in June of 1977. Human memory is notoriously poor for accurately remembering details.

          You really do have a poor grasp of the law, the facts, other people’s positions, common sense, and I’m sure a multitude of other things. Is this intentional or were you designed this way?

          Reply
          1. (it is intentional)

            Not sure exactly why anyone would intentionally be this way, but he does seem to relish his inanity.

            Reply
          2. Yawning A hole: Too bad your lack of understanding regarding the limitations of current computer software causes you to fail to appreciate how difficult a task that is.

            (1) I never said it was going to be easy.
            (2) Please tell everyone more abou these “limitations of computer software.” It’s a rare instance indeed when a patent t e a b a g g er ventures into that territory.

            design features are less amenable to written description than functional features. it is easy… to see why it is hard to examine these types of patent applications.

            Uh … right. That’s why they aren’t examined. That’s why they don’t deserve a presumption of validity. That’s why they should never be of much value to anyone unless they very, very narrowly describe a particular product with a very detailed and non-obvious design.

            I don’t know of anybody making a lot of effort to defend design patents.

            I can’t help it if you live in a cave. The article we’re discussing is premised on the fact that people like the former director of the USPTO are not only “defending” design patents but promoting them as The Next Big Thing.

            like someone in the field would say … oh wait, I’ve seen this before

            Perhaps you’ve forgotten that the PTO (allegedly) requires Examiners of patents to have a relevant background in the art, don’t you? There’s a number of reasons for that and one of them is that before you dive in it’s helpful to know, ge nerally, what’s in the prior art and where to look for it.

            You really do have a poor

            LOL. Next time try a pseudonym that doesn’t scream “I’m a ga ping a xx hole.” Good luck.

            Reply
            1. Yawn, and you cannot use MM as ” a pseudonym that doesn’t scream “I’m a ga ping a xx hole.” – that one is clearly taken.

              ;-)

              Reply
            2. Please tell everyone more abou these “limitations of computer software.”
              I would bother if you really cared and/or you would understand. Since neither applies (and nobody else has asked), I’ll pass.

              That’s why they aren’t examined.
              They are examined. Not perfectly, but I’ve seen them rejected. Some examination is better than none — is it not?

              The article we’re discussing is premised on the fact that people like the former director of the USPTO are not only “defending” design patents but promoting them as The Next Big Thing
              So where is that stated in the article? The point about “The Next Big Thing”?

              Perhaps you’ve forgotten that the PTO (allegedly) requires Examiners of patents to have a relevant background in the art, don’t you?
              Not particularly astute, are you? There is a difference between being able to understand a specification describing a biotech invention versus a specification describe a semiconductor invention (because they use entirely different terminology and require very different backgrounds) and relying upon one’s background to know prior art.

              Next time try a pseudonym that doesn’t scream
              You’ve been screaming on this blog for how long? Six years or so? Honestly, I pity both you and anybody who personally knows you. You must be a miserable person to be around.

              Reply
              1. You’ve been

                “Yawn”, indeed.

                Let me know when you figure out how to talk about the “limitations of computer software” without shooting yourself in the face.

                In the meantime, keep pretending you were born yesterday and you have no idea about nobody pushin’ the awesome money-makin’ future of trollin’ design patents. Ignorance suits you like a glove. It really does.

                Reply
              2. Let me know when you figure out how to talk about the “limitations of computer software” without shooting yourself in the face.

                LOL – another AOOTWMD – how about those volunteered admissions against interests, eh Malcolm?

                Reply
              3. Let me know when you figure out how to talk about the “limitations of computer software” without shooting yourself in the face.
                False bravado does not become you.

                keep pretending you were born yesterday and you have no idea about nobody pushin’ the awesome money-makin’ future of trollin’ design patents.
                I don’t know anybody pushing design patents — sorry to burst your bubble.

                Reply
              4. False bravado does not become you.

                But self-FAIL and Accuse Others Of That Which Malcolm Does is his trademark.

                Reply
    3. Malcolm you write: “Design patents are never going to “come of age” until we have a robust, rational system for examining applications for design patents”

      But is there any country in the world that today examines design applications on their merits? I know the UK did, until 1986. But then the UK harmonised with the EU and abandoned examination on the merits.

      Perhaps that is because registered design protection is so narrow that infringing is usually by copying.

      Copying in the Fashion Industry is endemic, and instant. That’s why, with Design Patents, there needs to be rapid issue of the Grant Certificate, and no PTO publication earlier than that. Incompatible with examn on the merits.

      Is there anywhere in the world, other than the USA, where there is reference to design “patents”? As far as I know, everybody else speaks of Registration of Designs.

      Reply
      1. is there any country in the world that today examines design applications on their merits?

        The US pretends to and occasionally actually does reject them.

        Reply
      2. Max, agreed that US thinking on design patents is archaic.

        Registration is the way to go.

        Prior user rights should be virtually the only defense.

        Reply
        1. Archaic…?

          I don’t think that’s the right word Ned. Not sure what point you are trying to make here (other than you want a different system).

          Reply

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