In 2012, the US enacted the Patent Law Treaties Implementation Act designed to enact national laws sufficient to allow the US to become a member of the Hague Agreement for the registration of industrial designs (i.e., design patents). The treaty was previously ratified but not put into law.
Now, the US has deposited its ‘instruments of ratification’ with the World Intellectual Property Organization (WIPO), which is the final formal step for becoming a member. Under the rules of membership there will be a three-month delay and the US will become a member on May 13, 2015.
The benefits for design patent applicants: (1) the Hague Union offers an easy-to-use international design application that can contain up to 100 designs in a single application. (2) US design patent term will move from 14 years to 15 years. Although the USPTO has not released its final rules, it appears that these changes will only be effective for applications filed on or after the May 13 date. It is unclear to me at this point whether a continuation application of an already pending design application would be able to take advantage of the extra year.
Although the US will continue to examine design applications under the design patent regime, many countries do not conduct any substantive examination.
The US move to join Hague has been a catalyst for other countries as well with South Korea, Japan, Canada, and China, all expected to join in the near future. Most European countries (and the EU) are already members.
As usual, a posting about design patents has been subsumed into a utility patent/IPR discussion. Sigh.
“As usual”
Yes, that does seem to be the norm.
Perhaps we can pick up the design patent discussion below at 2.1.1.3.1.1…?
Let me repost here for convenience sake (in your reply concerning using restriction requirement against the newly allowed ability to combine up to 100 designs in one application:
Would love to see how those restrictions will be made under the change in law that allows 100 different designs…
(See Prof. Crouch’s write-up above)
Thinking about this new ability, I wonder if the 100 designs will be taken to be patentably INdistinct, and if such a position would in fact greatly weaken the patent itself (for example, opening up a wide door of possible prior art designs to challenge the patent). If indeed, that in order to avoid restriction, the patentee is forced into the “admission” of such “sameness,” what patentee in their right mind would ever make that (extremely) short term trade-off of multiple designs in a single patent (lower fees) for the increased risk of patent coverage?
Given that Europe also issues design patents without any meaningful examination of patentability over the art, I thought I should alert readers to recent design patent litigation in England, which concerned design rights in a frame for leather straps, for “use during ..xual activities involving ….age”. As the report in this month’s CIPA J. notes “The parties fell out” and so there was litigation. The court noted by the way that, according to the evidence, the prior art “Beefy” frame from the USA was “wobbly and over-priced”.
To download written decisions on i) infringement of registered (ie “design patent”) and unregistered design rights ii) the enquiry into damages iii) the settling of a costs award, go to the http://www.bailii.org site and search under the plaintiff name UWUG or that of the defendant Derek Ball t/a RED.
There was much to-ing and fro-ing on costs which far exceeded the quantum of damages decided by the English small claims “IP Enterprise Court”.
Sorry MaxDrei,
I have misplaced my foreign spectacles, and cannot see the point you are attempting to make for US jurisprudence with the reference to the somewhat salacious European case.
Perhaps you can clarify….?
For anybody interested in allocation of costs according to a “Loser Pays” rule, the way in which the court computed the award of costs might be of interest.
For anybody who supposes that patent litigation is inherently too expensive for small players, in an adversarial witness evidence-based English law system, this case might be interesting. Quantum of damages awarded was (writing from memory) less than GBP 2000.
For anybody interested in assessing validity of design patents. For anybody interested how one litigates rights in designs that are not even registered.
Nevertheless, I might not have posted, except for the mention in CIPA J. that the parties had fallen out. In the context of a bondage frame, I thought that amusing, whether or not the writer of the CIPA report intended it.
At least I didn’t drag utility patents into the thread.
Re: “So what is going on with IPRs is not so much a reduction in costs, but something else entirely” [Plus other strange arguments.]
It that were really true IPRs would not already be so widely used.* In reality, even for the majority of patent suits settled before trial, prompt and successful IPRs are orders of magnitude cheaper than the massive discovery and other pre-trial costs for defendants, plus settlement payments, IF the subject claims cannot be distinguished from the newly cited prior art.
The “something else” is more relevant prior art missed in the application examination that can often be found in an extensive prior art search costing far more than the PTO examination fee, combined with not being able to play pre-Markman claim scope “nose of wax” claim scope games with the IPR APJ patent attorneys.
*[But note, re the erronious use of IPR statistics re patent validity being bandied-about, that in an even larger number of patent suits the patent’s validity is not still not even being challenged with an IPR. Also, those IPR’s not even allowed to proceed, or settled before any decision, or invalidating only some of the asserted claims, must be subtracted from IPR petitioner “win” statistics.
Furthermore, the few patents with extremely broad claims that are easy to assert against large lucrative infringement targets are not validly reflective of the millions of other patents in which good examiner prior art searches and actions resulted in patents with valid claims narrower than those originally filed.]
“[Plus other strange arguments]”
What is strange, Paul, is your utter fixation with IPR, and your apparent anti-patent holder stance.
Let me guess: you do not represent any patent holders in their enforcement actions..
Paul, the elephant in the room is the disparity between the PTO and the courts in the rate they uphold the validity of the patents before them. I don’t recall the exact statistics from court proceedings but I daresay that, when validity is decided in court, the vast majority of patents are upheld. Contrast that with what is going on in the patent office, where only 10% of the claims are upheld.
This is not about better prior art. That same better prior art appears both in the PTO and in the courts. Yet the results are dramatically different. It is not just costs that are driving IPRs, but the results obtainable.
If it were a wash between courts and the patent office in terms of success rates on invalidating claims, then I would agree that costs would be the primary factor. But not when success rates are so dramatically different.
We know that the patent office does not presume patents valid. We know the patent office uses broadest reasonable interpretation. And I also think that the patent office effectively places the burden of proof of validity on the patent owner through its procedures. The combination is lethal.
Back in the day, a few circuits were deemed unfriendly the patents and the argument was made that we needed a single federal appeals court not only to end forum shopping, but to strengthen the patent system. But the difference in validity rates between the circuits then was minor in comparison to the difference in validity rates between the patent office the court system. If the arguments for the Federal Circuit were then valid, then the arguments in favor of ending IPRs today are equally as valid.
Ned, those are valid and important fact questions for which valid statistics should be available, and they should be worth a whole new blog here for someone willing to dig them up from a valid source.
Namely, currently, in what percentage of District Court cases in which validity is actually in dispute, tried [or decided on S.J. or in post-trial rulings], and appealed, does the Fed. Cir. support an ultimate decision of validity versus invalidity of the asserted claims?
Undoubtedly lay jury validity verdicts supported by the added burden of “clear and convincing evidence” should make the percentage of claims upheld as valid that way higher than for decided IPR decisions. But it may not be as high as one might think, especially with all the recent 101 rejections, ambiguity attacks, etc? Also, we have yet to see the percentage of IPR 103 claim invalidity decisions that will be sustained by the Fed. Cir. where the patent owner put in adequate supporting evidence of unobviousness.
But if the reality of IPRs, in cheaply stopping a minor percentage of patent suits, and/or reducing the need to pay settlements to avoid litigation costs, is upsetting, it should pale in comparison to reading the recent strong statements of your leading California Republican Representatives re their determination to force through strong anti-troll [strongly anti-patent-owner-plaintiffs] legislation! [I have no personal income “dog in that fight” either, but some readers apparently do, and they should be going after their Republican Representatives. My interest is solely in pro bono rebuttals of misinformation.]
And, may I point out that if the reason that someone does not want to take out a license is their belief the patent is invalid, they can take out a license and then sue for invalidity. This obviates all the costs involving infringement and damages.
And the fact that no one actually does this is telling.
Actually, some companies have done that. It made more sense back when the license was often a running royalty, although their having taken a license will be used against them in a D.J. action.
But running royalty licenses are rarely granted any more. That leaves licensees paying the full royalty up front on patents they think are invalid and not being able to recover any of that payment even after the win. Furthermore, IF the validity issue is only based on prior patents or publications, a licensee can far more cheaply challenge validity in a reexamination or IPR.
Paul, the problem is the large amounts owed for past damages more than a running royalty for futures.
IPR IPR IPR
Cis coom bah
Rah Rah Rah
Oh whatever would Mr. Morgan do if the good ship AIA were to sink for lack of that amendment of separability?
Ned @ 1.1.1.1.1: “But I have a hard time believing that only 10% of the claims issued by the patent office are valid. The patent office not is not doing that bad a job, because if they are, then somebody needs to be fired.”
Ned@5.2: “Contrast that with what is going on in the patent office, where only 10% of the claims are upheld.”
Yes, sir, with respect, I think your incredulity in your own conclusion is well founded. Auto-incredulity, I think that’s called.
To reiterate/amplify Mr/Ms Anonymous’ point (1.1.1.1.1.5): your citation of the 10% figure for claims upheld in IPR, in and of itself, says nothing about either the quality of the initial PTO examination process or the percentage of issued claims that are valid-in-fact (viz valid-by-presumption). Now that you have repeated your assertion, would be grateful if you could tidy this point up.
IMO, it is a grievous flaw in logic to jump from 10% survival rate of claims challenged by IPR to “only 10% of the claims issued by the patent office are valid.” I don’t see that your response (1.1.1.1.1.5.1) to Mr/Ms Anonymous addresses the flaw in your logic that he/she raised.
In response to Mr/Ms Anonymous you argued:
“The statistic is important to compare validity rates between the patent office and the courts where the same claims, are were the same kind of claims, are litigated.”
Without necessarily taking issue with this statement, I merely note that it is non sequitur because your 10% assertion is not about the same claims being analyzed in IPR and judicial review. You were using the 10% IPR figure to deduce something about the quality of all allowed claims. I don’t think so.
Twain: L/DL/S
Babel, regarding 10%, I was not arguing that the PTO was doing a bad job. I stated the contrary. I then said that IF the PTO was issuing patents where only 10% of the claims were valid….
My main beef is that there is disparity in validity rates between the courts and the PTO and that this is not justified. There should be level playing field legally between the two, with reduced costs the ONLY difference.
But the way things are working, IPRs are undermining the patent system as a whole.
Ned: “But the way things are working, IPRs are undermining the patent system as a whole.”
Dude (to Quintana): Yeah well, that’s just, ya know, like, your opinion, man.
IOW, I don’t see data or facts supporting your conclusion, Ned. Personally, I see the IPR idea as moving in the best direction for every one. I think a patentee’s competitors should be able to challenge claims at the administrative level, but would agree that major modifications are necessary.
I would like to see the initial examination closer to a registration process based on analysis of 101, 112, and a prior art analysis of only art provided by the applicant. PTO should not be searching at all. Perhaps, there should be a period prior to the FOAM for third parties to submit references in order to mitigate the need for post grant challenges.
Applications that are approved would go into a 2 year probationary period ala’ trademark registrations. They would be presumed valid with respect to 101/112/and art analyzed during examination. During the probationary period third parties would be able to initiate IPR in the PTAB based only on 102/103 with respect to PA not considered by the examiner. After the probationary period, any claims still standing would be presumed valid.
“Presumed valid” would mean any challenge must be brought in the courts, preferably specialty patent trial court analogous to bankruptcy courts.
But my multi-faceted (aka totally scattered) point is:
1) examiners should not be searching. They should examine the case solely on art provided by the applicant, or third parties. If no one supplies any PA, then the presumption of validity would extend only as far as 101/112.
2) examiners’ findings of 101/112 validity should be challenged by third parties only in court, w/ presumption of validity;
3) examiner’s findings of 102/103 validity should be challenged by third parties only in court, w/ presumption of validity;
4) there should be a limited window during which any claim can be challenged in PTAB solely on the basis of art that was not reviewed by examiner during examination. After that probationary period all claims would be presumed valid and all challenges to validity would be in the courts.
IMO, 1) the trademark registration system has a lot to offer as a rough model for patent examination, and 2) the responsibility for flushing out PA should be the applicant’s and his competitors’, not the examiners’.
Just dreamin’ . . .
Babel, I think what you are proposing is something like deferred examination whereby a patent owner at any time can request examination on prior art.
The only problem with this is that claim scope is going to change as amendments are made. This may invoke intervening rights.
The system works better the way it is with an examination by the patent office and a guarantee of a period exclusivity. Amendments to the claims thereafter are not in the interest of the patent owner, therefore the patent owner has every incentive to make sure that the claims are valid over the prior art before they issue. This is why we have dependent claims after all, to deal with the unexpected arrival of unforeseen prior art.
As for third parties, I have no objection to their bringing to the attention of the patent office new prior art, or defending patent validity in court if they are sued. But I do object to third parties forcing the patent owner back into the patent office for an expensive re-examination, or IPR, based upon so-called new prior art which in many cases is simply cumulative. All this does is harass the patent owner – somewhat of an intended feature of the present system which is extremely hostile to patents.
Ned: the patent owner has every incentive to make sure that the claims are valid over the prior art before they issue.
This we agree on. It is axiomatic.
The question is: What is the most efficient way for the applicant to be sure his claims are valid over the PA?
Re-stated: What is the most efficient way to determine what the relevant PA is?
My point is that b/c it is so vital to the applicant’s patent, it is the applicant that should be going to the trouble and expense to determine what the PA is and draft the claims accordingly. This should not be an optional step, as it is now. The only way to make it mandatory is to put the burden entirely on the applicant, and let him/her decide when the application is filed how strong the claims will be as to 102/103.
The examiners have no skin in the game. If they do a half-*ss job, they don’t suffer downstream consequences of litigation ad infinitum. They get paid just the same. Is there any PTO QC metric that connects examiners to the patents they allow that are subsequently invalidated by a court? Would love to have access to such data w/ respect to the examiners working some of my cases. Does the examiner’s name appear in the USDC or CAFC pleadings or opinions?
Any inventor who relies on a PTO search to define the PA and, hence, the ultimate validity of his patent, needs a brain transplant, IMO.
At least one critical part of that dream should be recongized as having been made impossible.
“1) examiners should not be searching.”
Sorry, but the Tafas case clearly shows that searching is a critical part of the examination process, and examination cannot be forced onto applicants.
Sure, such a measure might be made a voluntary part of a “special program,” but you will NEVER see such a change legally pushed by the Office again.
anon: At least one critical part of that dream should be recongized [sic] as having been made impossible.
Good point, but I am doing this pollyanna thing — trying to envision a more perfect patent system than the fustercluck that Giles and the boys gave us in 1952.
What is or isn’t a “critical part” of the examination process can, and should, be determined by statute.
And your comment about the necessity of the Office supporting legislation is also point-on and raises an additional issue: There is no strong association of patent practitioners to stand up for themselves and their clients, either w/ respect to PTO rule-making or drafting statutes (or practitioner discipline/ethics issues). Essentially, you have PTO and POPA running the show.
Are there any change of the ornamentality requirement?
No, there are no changes to 35 USC 171, where that appears, or 289, just 173 re term.
Correction to Dennis’ original post: South Korea is not “expected to join in the near future”, as it already is a member to the Hague. S.Korea went live on July 1, 2014. link to wipo.int
Although the US will continue to examine design applications under the design patent regime, many countries do not conduct any substantive examination.
To be brutally honest to some of my fellow examiners, I fail to see how the US is any different from the rest of the world on this point.
One difference is that in the U.S. applicants must pay for examination and wait for it to be completed.
Dennis, I think what he meant is that (as you demonstrated by your own statistics in a prior blog) design patent applications rarely ever get 102 or 103 rejections, only at best formalities rejections.
Yes, that’s exactly what I meant. Thanks, Paul!
Thanks Paul – I was intending to make a perhaps too-subtle poke at the USPTO – that the only difference between our examination system and the ROW’s registration system is that we pay more and have a delay in registration.
Have you seen the prices on rubber stamps lately?
Precisely.
Careful with “poking” as certain people may become offended and the moderator may come after you…
Oh wait…
Design examiners are going to examine 100 designs?
It’s called a restriction requirement.
Would love to see how those restrictions will be made under the change in law that allows 100 different designs…
(See Prof. Crouch’s write-up above)
As to enforcement of design patents, notwithstanding Fed. Cir. case law confusion re 103, previously discussed on this blog, it is surprising that more IPRs have not been filed against design patents, considering their IPR results? The latest is reported at:
link to aiablog.com
P.S. to Ned and Anon. It seems to provoke you both every time I mention IPRs. So this is note that I am simply using blog comments on it to try to provide practical realistic pro bono help for readers based on present realities. [As opposed mere repetitive personal wishes for IPR’s and the rest of the AIA to somehow just all go away [in spite of its continued huge bi-partisan support in Congress] which, of course, is of no practical use for anyone].
The editorial “edit” merely pointing out that Mr. Morgan appears to be admitting giving legal advice – albeit pro bono legal advice – is removed…?
What pray tell was so offensive with such an observation?
The huge difference in legal fees and results between citing prior art in IPRs, vs. jury trials, especially for design patents, is simple common sense business information. As has been noted and demonstrated many times, nothing on this blog is legal advice.
What you could call bad advice is attorneys still saying “save it for the jury” to clients not getting independent second opinions from another expert, as one sensibly would before dangerous major surgery.
Paul, in my experience, the vast majority of legal expense in a trial is related to infringement. Validity mostly is a backwater issue. The problem for a defending infringer is having to spend all that money on infringement in order to win on validity.
The problem is not necessarily related to trying patent validity to a jury, it is this co-mingling of infringement and validity in the same trial.
However consider what is been happening with 101 invalidity. Patents have been held invalid on the pleadings.
Moreover, if a patent is clearly anticipated by the prior art, they can be disposed of on summary judgments .
But when one gets into obviousness, I do not believe that patents are clearly invalid. I really believe that patent owners deserve to have this issue tried to a jury.
What is going on in the patent office in IPRs is somewhat of a travesty even though they reduce costs. Only 10% of the patent claims subject to an IPR are confirmed – and I suspect that most are declared unpatentable on obviousness grounds as opposed to anticipation. How can this be? Someone say it is the lower burden of proof. Others would say BRI. As cases get up to the Federal Circuit, we will learn more what the real reason is. But I have a hard time believing that only 10% of the claims issued by the patent office are valid. The patent office not is not doing that bad a job, because if they are, then somebody needs to be fired.
Moreover, if I recall correctly, nowhere near 90% of the patents challenged in courts are held invalid. Is probably more like 10%.
So what is going on with IPRs is not so much a reduction in costs, but something else entirely.
Ned, the reason infringement issues normally get more effort and attention in litigation is because that is the only issue on which the patent owner has the burden of proof, so that the defendant is vastly more likely to get a S.J. for non-infringement, providing there is an early enough Markman to end the “nose of wax” game as to the valid scope of the claims, especially a design patent “claim.” Whereas an S.J. for invalidity is hard to get, and infrequently sustained. Since something like 97% of patent suits never go all the way to trial, validity often never even gets decided at all in litigation. And, as you note, can involve “co-mingling of infringement and validity” by a jury.
So what is going on with IPRs is not so much a reduction in costs, but something else entirely.
Deferred examination, with the search being performed by a party with a vested interest and a lot more resources to find solid prior art.
APoTU, but we are comparing rates of invalidation between the PTO and the Courts.
I think that Apotu’s answer is a bit more revealing (and indeed may speak more broadly than that which Apotu may intend).
To wit:
“Real” examination (called deferred examination) is only done if the patent comes up as contested by interested parties.
One (should) ask, why the H are we then spending literally Billions of dollars even bothering with an examination system by the Office?
For a minimum fraction of that cost, a robust cross-checked fully searchable registration system could be developed and maintained.
Switching to such a system, and removing the presumption of validity, seems to be the logical conclusion to Apotu’s premise. If we really are NOT going to give credit to the examination system, we should we continue to pump Billions of innovator funded monies into that system year after year?
To paraphrase Andy Dufresne, “get busy examining, or get busy registering.”
link to youtube.com at 2:51
Simple choice really.
Anon, I agree you hit on something here. The PTO is acting like there was no examination at all and that the patent owner has the burden of proof.
One (should) ask, why the H are we then spending literally Billions of dollars even bothering with an examination system by the Office?
Because absent some other profound changes to our legal system, some sort of examination of utility patents is waaaaaaaaaay better than nothing at all.
We can only imagine the quality and quantity of unadulterated crxp that would be “registered” by the rich abusers who are barely deterred by the safeguards in the broken system we currently have in place.
Malcolm,
Why?
On what basis do you make that claim?
It should be clear (to you of all people), that “money is not object” – even if in the aggregate our innovators spend Billions (with a B) on something that appears to serve no actual purpose.
Unless you love the diversion (a pure tax on innovators), then the money spent is not even going (the large bulk of those billions) to any worthwhile cause, except to pay for examiners who appear cannot do a decent job – according to the levels of your own whining.
Can’t you come up with a better spend for those billions?
APoTU, what I think is going on in IPRs is that the PTO is shifting the burden of proving validity to the patent owner.
As previously noted, the “vested interest” is one created by the patent owner by suing the defendant, in 80% of all IPRs, per the PTOs own statistics.
Paul,
Your bias continues to show.
Here, your post works against you and fortifies Ned’s point above.
As I posted, what the logical outcome of this is to simply dispense with the multi-Billion dollar innovator tax boondoggle of any examination.
Innovators – and innovators alone support the Office Billion dollar budget through user fees.
If indeed far less than 2% of patents even see the courts, and of that, as reflected in the IPR stats, the examination is only catching 10-20% validity, then that Billion dollar price tag looks like an extremely poor way to spend innovators’ moneys.
And yet, no word from you on this facet – only relentless cheerleading of IPR’s…
Talk about strange.
have a hard time believing that only 10% of the claims issued by the patent office are valid.
I don’t have a hard time believing that, especially given what we know about grant rates over the past 15 years.
Even more important, however, is to recognize that the patents you see in IPR are a selected group. For the most part, they are junk patents that should never have been granted in the first place and they are being rigorously examined for the first time with the assistance of one party deeply invested in proving invalidity.
Also, please remember that people are still licensing patents that aren’t garbage and they will continue to do so. It happens every day.
(…so, several Billion dollars is “worth it” to Malcolm for effectively a 10% filter)
Wow.
Ned: The patent office not is not doing that bad a job,
In the computer-implemented “arts”?
Of course they are doing that bad of a job. Is it getting better? Maybe, marginally. But there’s question that the examination of computer-implemented patents has been a joke for the last quarter century, at least. And we all know why.
Because of the Red Queen’s feelings, ‘natch.
I have a hard time believing that only 10% of the claims issued by the patent office are valid.
Ned,
That logic is faulty because of self-selection bias. Assuming your facts, only 10% of claims put into IPR are valid. This is completely different than 10% of all issued claims. Attorneys don’t put patents into IPR unless they have a pretty good invalidity case. Also, narrow claims for which there isn’t an infringement concern are often (but not always) left out of IPRs.
If someone randomly tried to put x number of patents or even litigated patents into IPR, I suspect the percentage of confirmed claims would go up.
Anonymous, the statistics from the PTO are that 10% of the claims before it in IPRs are upheld. But not all claims in the patent are even challenged – only ones that are infringed by people bringing the IPRs. The other claims that are not challenged probably too narrow to be of any commercial value. And yet those claims might be valid.
The statistic is important to compare validity rates between the patent office and the courts where the same claims, are were the same kind of claims, are litigated. In courts, I daresay, the majority of claims if not the vast majority of claims are upheld as to their validity.
I would think that this would be a good research project by a professor to compare validity rates between the patent office and the court system. The lack of presumption of validity, the use of broadest reasonable interpretation, and presumption that the patent office seems to be using that the patent claims for which it authorizes trial are invalid seems to result in a 90% rate of invalidation.
…get busy examining, or get busy registering.
Simple choice really.
i really wish there was still a “like” function for replies.
these fits about posts being deleted always put a smile on my face.
Comments are closed.