The USPTO continues to process design patent applications without delay. The first chart below shows the average pendency of design patent applications grouped by their month of issuance. (Because design patent applications are not published, I can only work with issued patents.)
The secons chart provides some range for the pendency. For the most recently issued design patents, about 50% issued within 12–months of the application filing date. Throughout the 1990’s, less than 25% of the design patents issued within 24–months.
See also: Sailing Through the PTO.
MaxDrei, Thanks for your reply, just wasn’t sure if there would be a prior art issue with regard to the previous application. Appreciate it.
BB, to your three questions:
1) a lot
2) No
3) Yes.
In the EU what qualifies as prior art? If an inventor filed for a design, then changed said design 3 weeks later, must they refile and expressly abandon? Can they still prosecute both patents?
Mr Saidman, that’s an interesting remark. The right given by a copyright law requires proof of “copying”. The pan-European design registration right works just as well against those who haven’t copied at all. So I had supposed it to be more like a patent right than a copyright. Do you still categorise it as a species of copyright law? On what basis? Where in the world are registered designs part of copyright law?
Interesting that US design owners are willing to pay thousands of dollars to patent a single design in our de facto registration scheme. This is probably due to the fact that there are no alternatives – design patents are the only game in town.
Some also argue that it is foolhardy to trade the devil you know (a design patent system) for the devil you don’t know (a design registration system). But, as International Seaway so aptly demonstrates, trying to fit design protection into a utility patent shoe (35 USC) can sometimes make for really sore feet.
And our de facto registration scheme is quite expensive. In those Office actions that are not substantive 102/103 rejections, PTO Design Examiners misguidedly spend an inordinate amount of time and energy making sure the design applicant’s drawings are “correct”, driving away their customers with unnecessary, nitpicky and duplicative Office actions (in my personal experience), further driving up the cost of a design patent.
It is only an accident of history that US design protection became part of 35 USC, rather than part of the copyright law where it really belongs and where most of the rest of the world puts it.
Yes – More than ninety-eight percent (98%) of the design patents in a my sample were issued without the PTO challenging their novelty or nonobviousness under Sections 102 or 103(a).
Dennis–
Did you mean to say “not challenging” rather than “challenging”??
Thanks Paul & Perry — You asked about 102/103 rejections. My initial analysis of design patent pair data shows that the PTO is operating as a de facto registration system with more than ninety-eight percent (98%) of the design patents in a my sample being issued without the PTO challenging their novelty or nonobviousness under Sections 102 or 103(a). These are preliminary results based on the analysis of a few hundred design patent file histories only.
Paul there is no European requirement of non-obviousness. Instead, a design to be registrable must be novel and have individual character. No infringement unless that individual character is misappropriated. Machine parts that “must fit”, and machine parts that “must match” present a special difficulty, amongst those who compete to supply spare parts. As you might guess, Germany favours for such machine parts the protection of pan-European registration rights but not all EU Member States agree with that position.
Designs that are dictated exclusively by function are not registrable.
Can you say more about shake-down suits. Are they happening? I didn’t know. Have you followed the P&G vs Reckitt Benckiser litigation in Europe, on designs of cans (cheap imitiations, P&G might huff) for spraying aerosol cleaning/polishing fluids?
How about attacking validity at the EU Registry? Is that not cheap enough for you? There have been plenty of such actions by now, I gather. Standard: preponderance of evidence.
Good question Max. I found it particulary disturbing to hear reports, if true, that in Europe one can easily get [and presumably enforce?] a design registration on some non-inventive machine part that has to be made in that shape to fit in the machine, not for any ornamental reason?
I.e., I do not see much difference bwtween registered designs and de facto unexamined design applications. Either presents a real commercial danger if their enforcement is not effectively limited to their express intent of protecting unobvious ornamental, not structural, designs, which needs is an appropriate low cost validity test that will prevent shake-down suits.
Interesting thoughts from Saidman. Europe has its enthusiasts for a pan-European, registration only, utility patent system that would be modelled on the German “Gebrauchsmuster” (GBM) 10 year unexamined utility patent system. But it can’t work up any enthusiasm for it. Forests of unexamined monopoly rights are all very well for designs, but not funny when it comes to inventions in all fields of technology, as folks like Bill Gates will tell you.
Does the GBM system work, at a national level in Germany? After a fashion. But that might be because up to now disputes are almost invariably “German on German”, where both sides play by the same “Rules”.
Perry, EU design registration law is very new. Those registrations are superficially dirt cheap and very potent. But what’s your experience of litigating them, thus far?
Perhaps Prof. Crouch can give us some statistics on 102/103 rejections in design patent applications. It would be interesting at this particular juncture, so that it can be compared to later statistics should the PTO change its examination approach as a result of International Seaway and/or KSR (should the latter ever be applied to designs). I agree with Mr. Morgan’s supposition. The major arguments in favor of a registration system for designs have always been speed and cost. In the EU, they register Community Designs within about 6 weeks after filing, and their goal is 48 hours. The cost per design is far, far less than a design patent, precisely because there is no examination. Why pay the high cost of examination for every design when far less than 1% get enforced? At the time when an infringement issue arises is soon enough to examine the validity of the registration, when the parties involved are interested in doing so, and have the incentive to spend the money to do so. It works great in the EU. Time for the US to catch up to the rest of the world. And it’s ok to keep the design patent system in place by means of a provision that will enable applicants to file for a registration (quick, cheap) and within 1-2 years file a design patent application and claim priority to the registration filing.
It would be very interesting to see what percentage of design patent applications ever get 102 or 103 (obvious) prior art rejections, as opposed to mere formalities rejections?
[If it as small as I would suspect, would enacting a registration system make more sense and be even faster?]
Well, you know what Mooney’s going to say. The speed at which they’re approved has something to do with the rigorousness of the examination they’re subjected to.
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