Publishing Design Patent Applications: Time to Act

Guest Post by 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 paper reflects the views of the author. He wishes to thank Bob Armitage and Mike Kirk for their excellent contributions to the paper.

Last summer I wrote a paper[1] with this same title explaining why now is the time to commence universal publication of all design patent applications filed in the United States. Indeed, recent events have made this the perfect time to legislate such transparency.

The United States has now deposited its instrument of ratification of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs. The Geneva Act will enter into force, in respect to the United States, on May 13, 2015. The Final Rules were published by the USPTO on April 2, 2015. U.S. applicants will be able to file under Hague, have their Hague-filed applications published by the International Bureau of the World Intellectual Property Organization at 6 months from filing, and be eligible following such international publication for provisional rights to recover a reasonable royalty under 35 U.S.C. 154(d).

For the reasons stated in my earlier paper, all U.S. design applicants—not just Hague applicants—should have the benefits that come from this type of universal examination transparency. Transparency places design patent applicants into the driver’s seat, able to head off those that may be tempted to copy a product incorporating the published design. They can develop a filing plan which meets their circumstances and know exactly when their application will be published making provisional rights available.

Importantly, the published application will produce an immediate prior art effect retroactive to its filing date once published—for both anticipation and obviousness purposes. Thus, those who would subsequently seek to obtain patents on the same design or obvious variants would be blocked.

Armed with the knowledge from published pending patent filings, competitors will have the opportunity at an early point in their commercialization process to design away from designs covered by published claims. They can thereby avoid the potential exposure under provisional rights, as well as the potential for post issuance infringement liability for the infringer’s total profits (35 U.S.C. 289).

The public will benefit from the opportunity to provide input into the examination process. Public input during the examination phase carries with it the promise of a higher quality examination and more certain patent validity. Competitors will have the ability to provide patent examiners with prior art that might otherwise not surface or be overlooked.

This is possible because the America Invents Act (AIA) offers a brief time window after publication of an application for public submissions of prior art to patent examiners. The limited duration of this opportunity assures that the speed of examination is not negatively impacted. Public input of this type can have the collateral benefit of lessening the likelihood that a PGR or IPR will be initiated based upon missed or overlooked prior art during the patent application filing and examination process.

Publication of domestic design patent applications should occur, as it does for international design patent applications under Hague, six months after the U. S. filing. In my earlier paper, I explained the reasons that 18 month publication used for utility patent application publication is inappropriate for design applications. The short examination pendency before design applications mature into issued patents dictates that design patent applications be published at six months.

Understandably, concerns over this move to transparency have been expressed by those who have grown comfortable with the pre-Hague status quo. Adapting to any new regime requires adjustments to new opportunities and new challenges. Utility patent practitioners have blazed the trail here, having gone through a major change-in-practice drill with the America Inventor’s Protection Act (AIPA) and AIA. In the end, the transparency that early publication would provide and the benefits that it would offer to clients argue strongly for professionals to embrace this change.

An important goal of the patent system is to promptly and efficiently grant valid patents on inventions that stimulate marketplace innovation. Publishing design patent applications advances that goal.

[1] Griswold, Gary L., Publishing Design Patent Applications: Time to Act¸ Patently-O (August 24, 2014), available at and IPO L.J. (August 26, 2014), available at

12 thoughts on “Publishing Design Patent Applications: Time to Act

  1. 9

    Completely (almost) unrelated matter: if not design patents, what IP protects the texture (the tactile version, not visual) of an article?

  2. 8

    The comments about copying are significant, for exposing the difference between design and utility patents. The former protects a design, the latter an inventive concept. It is easier to see when a design has been copied than when a utility patent has been infringed. Easy enough, in fact, to allow summary judgement of infringement, as soon as the design patent is published.

    That’s why a cheap and quick (registration on demand) pan-European Registered Design is so potent. Why should there be any problem, swiftly to enjoin those who wilfully copy the subject matter of published design patents? They are counterfeiters, aren’t they?

    1. 8.1


      Please define “inventive concept” as you intend to use that term.

      (this is not an idle exercise, nor is it an ad hominem – or any other type of – attack on you). What it is is a note on the perniciousness of the current judicial trends regarding the utility side of patent law and the ease of widespread decimation possible because the Supreme Court created a weapon without limits in the “Gist/Abstract” sword.

      You seem to want to make a point that designs, being mere images and not needing any thinking are somehow more objectively easier to pass judgement upon. But this exemplifies instead that ALL utility patents fall prey to that very thing that distinguishes utility patents (ALL utility patents) from the “mere images not needing any thinking to objectively note any possible judgement.”

      Either your immediate statement here is absolutely wrong and there is NO difference between design patents and utility patents OR the pure take away from the Supreme Court’s gift of a limitless “Gist/Abstract” sword is a dangerous over reach of the judicial branch into the statutory patent law regime.

      And yes, this turns on the phrase you used and which I draw attention to: “inventive concept.”

      It is further no accident that the genesis of Congress reacting against a Court that had had been given a certain ability to use common law development to define “invention” but had become mired in so doing, and had that common law tool stripped from them in 1952 by Congress breaking up the pre-1953 single paragraph into the 101/102/103/112 state of law that apparently befuddles those who do not (or knowingly simply refuse to) understand that Congress acted in 1952 to do more than merely codify the law.

  3. 7

    The average time period between filing for a design patent and the issuing of that patent (i.e., the patent’s issue “pendency”) is now about 15 months. So publication at 18 months would be meaningless in the vast majority of cases.

  4. 6

    For the life of me, I cannot remember why we overlooked design patents when we were trying to get patent applications published in the late 90s. Can anybody who was part of that effort tell us whether that was a conscious choice or just an omission?

  5. 5

    Last line of the article is a false conclusion.

    Publishing has zero to do with granting.

    The other comments made on the author’s earlier post still apply.

  6. 4

    For the life of me, I cannot remember why we overlooked design patents when we were trying to get patent applications published in the late 90s. Can anybody who was part of that effort tell us whether that was a conscious choice or just an omission?

    1. 4.1

      What was the pendency of a design patent in the late 90s? Probably Dennis or somebody has posted the stats already … If 99% of design patents are/were sailing out of the office 6 months after filing, the need for pre-grant publication wouldn’t be felt as strongly (but should still be required, IMHO).

  7. 3

    Great post Gary! Thank you for the detailed, yet succinct description of the benefits of the international design application.

  8. 2

    Gary says:

    >>Armed with the knowledge from published pending patent filings, competitors will have the opportunity at an early point in their commercialization process to design away from designs covered by published claims.<<

    Early publication of design patents give copyists an opportunity at an early point in their knock-off process to copy the design.

    1. 2.1

      I had exactly the same thought when I read those exact words.

      Earlier publication of design patents lessens the time frame the inventor has to tool up and/or create the marketing materials that are often necessary for a successful first-to-market launch. Copyists, who often produce products of lesser quality, have an easier time beating the patentee to market under this scenario.

      With more pressure to file a patent early under the AIA, early publication produces a pincer-like time squeeze on the inventor.

  9. 1

    Honest question: my limited understanding of design patents is that they are more if a registration system, with substantive prior art rejections incredibly rare. Is that so, and if so, would publication really change much?

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