Defending Design Patents

Guest post by Professors Sarah Burstein (University of Oklahoma) and Saurabh Vishnubhakat (Texas A&M University).

In our new paper, The Truth About Design Patents, we debunk three widely held—but incorrect—views about U.S. design patents. Taken together, these myths paint a grim picture of design patents:

  • Half of all design patent applications are rejected.
  • Most asserted design patents are invalidated in litigation.
  • Most litigated design patents are not found infringed.

By this account, design patents are hard to get, hard to defend even if you do get them, and hard to recover on even if you do get and defend them. These beliefs are commonplace in the literature and often invoked without citation. But, when we traced these assertions back, we found an origin story of weak support and misunderstood data.

In our paper, we provide more current, transparent statistics to replace each myth that we debunk. However, we strongly caution against over-interpreting our findings.

Where do these myths come from?

The origins of these claims lie in three old and misunderstood sources: a 1985 study by Thomas Lindgren, a 1979 study by the USPTO, and a 1953 study by Raymond Walter. The Lindgren study contributed to all three claims, whereas the USPTO and Walter studies contributed mainly to the second claim—regarding frequent invalidation during litigation.

One big problem with these studies is that, as you can see from the summary above, they’re all really old. Walter’s data preceded the passage of the Patent Act of 1952. Even though the most recent one, the Lindgren study, was published in 1985, it only considers data through 1983. And the Federal Circuit hadn’t yet decided its first design patent case at that point. So these studies can’t tell us much about what’s going on in the Federal Circuit era, unless one assumes—unreasonably—that the Federal Circuit didn’t meaningfully change design patent law.

We also found other problems with these studies. For example, Lindgren noted in his article that his sample size was too small to draw statistically significant conclusions. But his data was cited by others, in citation networks we trace in much more detail in the paper, as if it were statistically significant. Moreover, a 1999 paper mis-cited Lindgren for a claim that the 1985 study didn’t actually make, and that mistake is what hardened into the first piece of conventional wisdom noted above: that half of all design patent applications are rejected.

What’s the real story?

Recognizing the best way to fight bad data is with better data, we also offer corrections and updates to the record. The following findings about the current state of affairs follow the same sequence: acquiring design patents, defending them, and enforcing them.

Acquiring Design Patents

For nearly the last quarter-century, the success rate of design patent applications seems to have been over 85%, not the 50% that Frenkel reported in 1999. (We note that our findings are consistent with what Professor Crouch found in his 2010 study of design patent examination.)

Allowance of Design Applications as a Share of Total Dispositions (1989–2020)

Allowance Rate of Design Applications as a Function of Total Design Applications Filed in the Same Year (1989–2020)

Our source is the USPTO’s own annual reports going back to 1989, the oldest data that is readily available. This data shows that, since 1989, the apparent grant rate for design patents has stayed at or above some 70%—whereas the volume of design patent filings has quadrupled over the same period. By the mid-1990s, that rate was nearly 80%.

But most regular design applications (i.e., those not filed through the Hague System) are kept confidential and unpublished unless and until they issue as patents. So how can we reach this finding if application-level data is all broadly unavailable? The USPTO annual report data reports three totals relevant for us: (1) design applications newly filed that year, (2) design applications allowed that year, and (3) design applications abandoned that year. From this, we can infer the success rate of design applications. It’s not perfect but it’s the best we can do right now.

Defending Design Patents

Similarly, our research did not support the assertion that most litigated design patents are invalidated in the courts. In fact, the opposite is true. For the period of 2008–2020, district courts making validity determinations about design patents upheld them (i.e., found them “not invalid”) 88.4% of the time—and only 11.6% of these determinations resulted in a patent being invalidated. Relatedly, over the same period, district courts making enforceability determinations about design patents upheld them 99.5% of the time—and only 0.5% were found unenforceable. The full paper explains how we reached these figures, which are based on a study of nearly 1200 case documents in U.S. district courts where a determination was made about patent validity or enforceability.

(We note that our findings are consistent with what Andrew Torrance found in his 2012 study of design patent litigation. To some extent, our findings are even more patentee-friendly than the Torrance study.)

We also looked at design patent outcomes in the International Trade Commission and the UPSTO Patent Trial and Appeal Board. There were fewer cases in these tribunals, but the data we found paints a picture that is far from grim.

For the period of 2011–2020, ITC determinations about validity upheld the patent 95% of the time and invalidated only 5%. Given the relatively small population of ITC design patent cases, we caution against strong conclusions about strategic behavior across tribunals as is often seen with utility patents. Still, the available data does suggest that the ITC is not invalidating two-thirds of the design patents asserted there.

Meanwhile, from when PTAB trial proceedings came online in 2012 through 2020, the survival rate of design patents in these administrative trials has been 79%, reflecting a survival rate of 78% among IPR cases and of 81% among PGR cases. We refer to an overall survival rate because patents can survive (1) when petitions challenging them are never instituted—i.e., taken up for review by the PTAB—as well as (2) when they are evaluated on the merits and are found not invalid. The overall PTAB survival rate we report accounts for both.

Enforcing Design Patents

Finally, our research did not support the assertion that most litigated design patents are found not infringed:

Findings of Infringement as a Share of District-Court Design Patent Infringement Findings (12-mo avg) (2011–2021)

Among district court cases decided between 2011–2021, the share of decisions in which the court found infringement showed some volatility, but generally, the share of design patent decisions in which the court found infringement has remained almost entirely above 50% since 2011. Since 2015, the share of design patent decisions in which the court found infringement has remained above 80%.

Again, we caution against over-interpretation of these findings. Our aim is to correct the record and reorient a conventional wisdom that rests on an inaccurate and incomplete statistical picture. Thus, we are acutely mindful of the risk in replacing one mistaken view with another.

What comes next?

A number of people have called for changes to the design patent system, relying frequently on the myths that we have now debunked. We hope that our paper will bring more light to these debates and, at a minimum, encourage more fact-based discussion on these important policy issues. We also call for more empirical research and for more transparency of data in this area. For example, we see no good reason for the USPTO not to publish all design patent applications. We know that the USPTO is bound by current law, and we call on Congress to reconsider that policy and to stop exempting design patents from the general publication requirements of 35 U.S.C. § 122.

Reasonable minds might differ over whether 18 months is the right time for publication as is the case for utility patents, but there is no good reason—at least none we’ve yet heard—to keep them secret forever (unless granted). Publishing these applications would not only provide more data for research and policy analysis but would also provide transparency on the issue of how the USPTO handles applications for this increasingly important category of patents.

= = =

Editors Note: We require disclosure of conflicts-of-interest for guest posts, including both financial interest and representation of interested parties.  One of the authors (Vishnubhakat) indicated an attenuated potential financial conflict in that he owns stocks in a number of companies, including some tech companies that hold utility and/or design patents.

43 thoughts on “Defending Design Patents

  1. 11

    “Prior art search costs may be particularly high in the design context, as most of the best existing search technology is text-based, not image-based.”

    “The PTO likely has a very difficult time locating relevant design prior art because it is harder to search for shapes than for words. . . . [A]s the scope and power of design patents expand, the PTO’s ability to locate prior art needs to expand as well. The agency should invest in improved search tools designed to find prior art…”

    We have felt the same for many years, dating back to when I was an Examiner at the USPTO. Image-based searching was not available at the time. That could have been substantially useful.

    We built Visualize IP to solve this precise problem. We teamed with former Caltech data scientists to build the world’s first professional-grade computer vision design search platform. And coincidentally, we have also recently demonstrated our tech stack to the USPTO.

  2. 10

    I have not done a statistical analysis as has Professor Burstein, so my following comments are based solely on my observations after having practiced as a design patent lawyer for about 30 years.

    Regarding acquiring design patents, to me it is not at all surprising, or objectionable, that there is such a high success rate among design patent applicants. The primary reason is because when an industrial designer sits down to design a new product for his/her client, he/she normally makes a careful study of what others have done in the past, i.e., the prior art, as well as what’s currently on the market. The goal of such a designer is normally to design a product that does what it’s supposed to do, better than what’s out there or what’s been done previously, and make it look a lot better than what’s out there, as visually distinctive as they can make it. Therefore, it’s no wonder that the resultant design gets allowed over the prior art.

    Regarding “defending” design patents (i.e., validity), I quite agree that relatively few design patents are found invalid in court, mostly because of the preceding paragraph, i.e., the design, having been laboriously created to look different from previous or current designs, is normally not very close to the prior art and is therefore novel and nonobvious. As Mr. Gandy points out, this is partially due to the difficulty in identifying a proper 103 reference; however, that’s how it should be for a uniquely designed product. If the design is “basically the same” as the prior art, i.e., obvious, the designer hasn’t done his/her job very well.

    Regarding inequitable conduct, I can’t remember the last time that issue was ever decided in a reported design patent case.

    Regarding infringement, I am suspicious of, and thus need to examine, the underlying data. Generally, the cases that are litigated are those where there are some noticeable differences between a claimed design and the accused design. It has been my experience that district court judges, who do not care for utility patent cases, like design patent cases because they can look at, and therefore presumably understand, the designs in question. Since in litigated cases there are always some differences between the claimed and accused designs, the judges can and do see those differences and many, sitting as the hypothetical ordinary observer, conclude that there’s no infringement due to those differences. This has only worsened since the Egyptian Goddess case that has allowed courts to ignore the prior art in determining infringement when the designs are “sufficiently distinct” (whatever that means).

    If there are actually high infringement holdings, one possible theory is the fact that successful designs are copied. Therefore, the copies are quite close to the originals, if not identical, because that’s the infringer’s intent, to trade on the goodwill of the successful design owner. Does the data include the popular tactic of suing multiple unidentified defendants, those who have exactly copied and are thus clearly guilty of infringement?

    The data, taken on its face, paints design patents as a gold mine, i.e., they’re easy to get, are not invalidated in court, and will be held infringed over 90% of the time (for the past 5 years).

    I think I’ll be a design patent lawyer!

  3. 9

    As a retired design patent examiner, supervisor and practice specialist I can safely say that the three myths identified in this post are just that. In the span of my career at the USPTO the allowance rate for design patent applications in the technology center was approximately 75 percent up until the early to mid nineties when it shot up to 85 – 90 percent range. This was due to the CAFC tightening of the criteria for what constituted a proper basic reference under 35 USC 103. No longer could examiners rely on a design concept reference as a primary reference. Rather, a proper basic reference must have an overall appearance basically the same as the claimed design. Based on my experience as an expert witness and design patent consultant since retiring I’ve found this criteria to have become tighter and tighter to the extent that a reference must almost anticipate the claimed design in order to be considered a proper basic reference under 35 USC 103. This makes the task of finding such a reference very difficult leading to very few rejections under 35 USC 103 by design patent examiners. Suffice it say, the percentage of design patents found to be invalid in litigation is very, very small. While I have no data or statistics to justify my opinion, I think it’s safe to say that the percentage of design patients found to be infringed in litigation is over 50% and probably some where in the 70 to 80 percent range.

      1. 9.1.1

        ipguy I don’t think that decision will have any significant impact on the allowance rate or infringement since at least in my 32+ years of experience at the USPTO, 24 of which as an examiner, I only gave 2 or 3 rejections under 35 USC 102 based on a single anticipatory reference. Finding an anticipatory reference under 35 USC 102 is very, very rare in design patent examination practice, at least in my experience at the USPTO. The first case I ever had on appeal was one I inherited from an examiner who moved over to classification. It was for a tablet that you put in an automobile radiator to seal a leak. The examiner rejected it under 35 USC 102 as anticipated over a medical tablet which was identical in shape and appearance except for its proportions, which is not a bases for patentability as a design in view of design case law. The case was affirmed at the Board of Appeals and then appealed to the CCPA which affirmed the Board decision. I never had another case appealed based on anticipation under 35 USC 102 and I sent well over 100 cases to the Board on appeal. However, that decision by the CCPA would not be affirmed today based on the SurgiSil decision. Such is the dynamics of the law!


          Thanks for the boots on the ground view.

          Thanks also for — unlike many of tue typical examiners that post here — posting in a more objective “this is (was)” as opposed to “this is how I feel it should be” manner.

    1. 9.2

      Thanks for your direct experience and expert observations that the [even further] increased design application allowance rate was “..due to the CAFC tightening of the criteria for what constituted a proper basic reference under 35 USC 103. No longer could examiners rely on a design concept reference as a primary reference. Rather, a proper basic reference must have an overall appearance basically the same as the claimed design.”
      This is the unjustified CAFC differential treatment of the [same] 103 statute for design applications and litigated design patents noted at comment 5 here and elsewhere. It seems ripe for a cert challenge.
      In re SurgiSil seems to be limiting the scope of a design patent “claim” for 102 purposes to only the same identified article of manufacture. But would you agree that this recent CAFC In re SurgiSil decision did not eliminate prior art articles with the same or very similar ornamental design features from being 103 references? That would be logically absurd, since the 103 POSITA, industrial designers, design many different products, not just one kind of article of manufacture.

      1. 9.2.1

        You continue to protest (with your own mere opinion —- something you constantly snipe from the sidelines in view of posts of others) without recourse to what other experts have told you in your windmill question to have 103 be “exactly the same as” utility patent treatment, when ANY reasonable person would immediately realize that you cannot have an “exactly the same as.”

        You then turn around and “define” PHOSITA differently for Design Patents without even batting an eye.

        Windmills Ho!


          It is the CAFC that treats the 103 POSITA language differently for design patents, not me. E.g., in contrast, for utility patents they have defined electrical engineers in general as POSITAS for very different electrical products, not just only engineers working on the exact same product.


            What do you mean “define electrical engineers in general”…?

            There is no such thing as “in general,” and you have skipped a few points there in the setting (and resolving) of the Graham Factors.

      2. 9.2.2

        Paul, in response to your comment, if a prior art reference is not analogous to a claimed design it doesn’t matter how close in shape and appearance it is to the claimed design it can’t be relied upon as a proper basic reference. That issue was decided many, many, many years ago in the decision of In re Glavas. Remember, in order to combine references, the law under 35 USC 103 requires that it be obvious to one of ordinary skill “in the art” regardless of whether it’s a utility or design patent application. A reference that’s not analogous to the subject matter claimed in a utility or design patent application cannot be relied upon to show obviousness under 35 USC 103. I agree with you that industrial designs, design many different products, but the law under 35 USC 103 limits prior art reference to just those that are analogous to the claimed subject matter in order to be considered obvious to one of ordinary skill “in the art”. I understand your frustration, but a long time ago Judge Rich made it very clear in his opinion in the decision of In re Nalbandian that design patents are not a good fit for obviousness under 35 USC 103. In that decision he refers to “the design problem” with regards to the 1952 Act establishing obviousness as a basis for lack of patentability under 35 USC 103. As an author of the 1952 Act, Judge Rich intended design patents to be removed from the patent examination system and converted to a registration system. In fact, for many years the USPTO sponsored legislation to convert design patents into a registration system. However, it never got the support or interest from congress, the ABA or AIPLA and eventually died. So, for the better part of the last 70 years the USPTO, and the design technology center in particular, the courts and practitioners have had to feel their way along trying to make design patents fit into a statute, 35 USC 103, that was established for utility patent practice. And you wonder why there are discrepancies in the decision process under 35 USC 103 between utility patents and design patents?
        As a further comment on my original post with regards to the tightening of the criteria for what constitutes a proper basic reference under 35 USC 103, I invite anyone to look at the applied references in the decision of In re Nalbandian and In re Carter and tell me whether you think those rejections under 35 USC 103 would be affirmed today. I think Not!

  4. 8

    “Editors Note: We require disclosure of conflicts-of-interest for guest posts, including both financial interest and representation of interested parties. One of the authors (Vishnubhakat) indicated an attenuated potential financial conflict in that he owns stocks in a number of companies, including some tech companies that hold utility and/or design patents.”

    This is a nothingburger disclaimer that I would have preferred not to have had my time wasted reading. We can safely assume that anyone writing for a patent law blog is very possibly going to have typical investments such as mutual/index funds, that such funds are going to include companies having an intellectual property portfolio that includes patents.

    If the “interested” author has a disqualifying conflict of interest, the minimal description provided in the disclaimer does not assist the reader in identifying it.

    I hope Patently-O will be more judicious about appending such disclaimers to blog posts in the future. It’s as simple as this: if a guest post author’s interests are deemed to be too diffuse or attenuated to be disqualifying, don’t bother to muck up the article with a weaselly disclaimer, and if a guest post author’s interests are deemed to be disqualifying, don’t publish the guest post.

    1. 8.1

      Alternatively, publish the post with full disclosure that the piece is intended to be a piece of advocacy (and welcome a hearty discussion).

    2. 8.2

      For what it is worth, Prof. C, I disagree with NoMotivation. I think that the disclosure was exactly correct as it stands. This is basically how any peer reviewed publication in the biological sciences would run its “conflicts of interest” policy, and it is a good model to follow.

      1. 8.2.1

        What, specifically, did the disclosure tell you about whether Saurabh Vishnubhakat’s interests should be disqualifying or not?

        If this disclaimer was a patent claim, it would get rejected under section 112 for indefiniteness. There’s nothing specific there to allow the reader to evaluate whether Saurabh Vishnubhakat is too financially interested to be able to have a reliably unbiased voice. Thus, it’s wasted space and wasted time.



          I believe that Greg is indicating that in his world, the reader ALSO is not the one making the discernment, but rather is one that is being informed that a discernment has been made.

          If I read him correctly, he is saying that the journal editors have made that discernment, and you (the Royal you of the reader) simply need trust the journal editors that any such disclosure “on its face” suffices.

          Of course, it is your view that I hew more closely too, given that academics in the law field are worse when it comes to proselytizing and advocating for their ideologues and desired Ends, as opposed to neutral or even teaching how to apply critical thinking (which is more of a Night Writer point than a Greg point).


            “the journal editors have made that discernment, and you (the Royal you of the reader) simply need trust the journal editors that any such disclosure ‘on its face’ suffices.”

            This is why I propose that the journal editors simply adopt a blanket policy to not publish those with disqualifying conflicts of interest. It is enough to infer from publication that no disqualifying conflicts have been disclosed. It’s also the right thing to do. Another right thing to do? Not waste the reader’s time with a paragraph that tells the reader nothing except “trust us”. We already trust you, if we’re here reading your content.


          What, specifically, did the disclosure tell you about whether Saurabh Vishnubhakat’s interests should be disqualifying or not?

          It tells me (1) that Prof. Crouch asked the question and (2) that the answer was “Vishnubhakat… owns stocks in… some tech companies that hold utility and/or design patents.” If there had been no “conflicts of interest” statement at the bottom, one would not know if that is because there are no such conflicts, or because the editors simply omitted to ask. By including such a statement as a regular feature, one can eliminate the “no one bothered to ask” hypothesis. That is worth knowing in all events.



            It appears that he would like to have ENOUGH of an answer in order to gauge whether there is material reason to suspect that a piece is not an objective piece.

            As I noted above, it is perfectly fine to have a piece written to advocate for a material benefit — that there is “some” possibility is not enough to set the level as being objective (if I were to speak for NM).

    3. 8.3

      If you’re worried about wasting time passing your eyes over the disclaimer, you should value the disclaimer greater as it reduces the lines of text complaining about ethics below the post.

      1. 8.3.1


        THAT is what he is trying to do — as I noted, by being able to HIMSELF make the discernment, as opposed to being told that A discernment had been made.


          The reader deserves (a) either enough information to discern for himself (i.e., a full and specific accounting of potential conflicts) or (b) not to be bothered with that nonsense. If we’re here reading the content, it’s because we trust Prof. Crouch et al. not to feed us interested propaganda. The disclaimer is implicit and need not be printed with every guest post.



            I will reply here for both of the replies of (above) and

            While I certainly understand your stated opinion as to what readers deserve, I could not disagree more with you as to ANY level of trust when it comes to academics (both in general, and patent law academics in particular) get, should get or quite frankly, deserve as to the articles ‘fed’ on this blog, any blog, and even fed to the court as ‘friends of the court.’

            NO such disclaimer is “implicit.”


            Back more than a dozen years now as I entertained a change in careers and looked into Academia at its fullest, I discovered a literal cess p00l of LACK of meritocracy and advancement made to those who best could spit back the desired narrative and entrenched dogmas. OVERALL, US higher education systems (and certainly infecting lower education systems) have
            at their primary mission of teaching HOW to think critically, and instead have been captured and devoted to a pre-ordained ideology that demands NO critical thinking against that pre-ordained ideology.

            The very opposite of your statement is then the norm to be taken: we should suspect EVERY article being fed to us to BE “interested propaganda.”

            I would further point out that the “ideal” that Greg advances is flawed due to the fact that Academia does not even have a code of ethics that is parallel to the code of ethics for attorneys. I dare say that in Greg’s view, those making the discernments carry a weighty and impactful RESPONSIBILITY, and (leastwise to those like Greg in that industry), the notion of “peer review” has some weight. Note as well that this notion of peer review has been discussed between Night Writer and myself, and for points that I have previously provided (and mirrored here), “peer review” of academics who advance by parroting back the desired narrative would carry NO such impact of being trustworthy.

            As I have advanced many times now, Academics involved with law – both teaching of lawyers and advocating as friends of the court, should have a far more stricter ethics code than attorneys.

            As is, there is ZERO reason to advance any of the trust that you seem to want to have.

  5. 7

    Off topic, but another provision of the Lanham Act falls to a first amendment challenge this morning in In re Elster (DYK, Taranto, & Chen). In this case, it is the 2(c) prohibition on “a name, portrait, or signature identifying a particular living individual except by his written consent.” The mark at the center of this challenge was “TRUMP TOO SMALL.”

  6. 6

    I think In re SurgiSil LLP is a game-changer, and what we really need to see are what post-In re SurgiSil statistics are going to show.

    link to
    link to

    From my own perspective, I’ve cited SurgiSil in several cases. The reaction by Examiners, SPEs and other USPTO personnel to SurgiSil has been telling. Most of the Office Actions have not been responded to, and I’m sure a couple of them are verging on negative workflow at this point (if there is still such a thing). The one Examiner who sent out a new Office Action made no mention of SurgiSil, but they dropped the art they were previously citing and made new rejections based on new art. The new art was not any closer to the claimed design, but my impression was that the Examiner sent out the new Office Action just to buy some time.

    1. 6.1

      Regarding Surgisil, the USPTO is very slow to analyze CAFC decisions and give direction to design patent examiners on how to handle it. As another example, to the best of my knowledge the design examiners have not been given direction regarding the very significant 2018 In re Maatita case where a design patent claiming a single plan view was approved by the CAFC. Keep an eye on the current Columbia v. Seirus case now pending in the Federal Circuit where the Surgisil issue is being directly addressed.

      1. 6.1.2

        Hi Perry! Does the slowness of the USPTO include dragging out an allowance?
        I found out recently that one of the cases in which I cited SurgiSil was allowed by the Examiner back at the end of last year (it shows up in PALM as allowed but nothing new in PAIR since I filed the response to the last Office Action). The Examiner doesn’t have sig authority so allowance needed to be approved by their supervisor. Three plus months later, the case is “still in review” by the Examiner’s Primary and a specialist in TC 2900. This seems far from normal to me. Are they waiting for a green light from higher ups at the USPTO or just trying to find a way around SurgiSil?


          My guess is that the design group 2900 simply hasn’t figured out yet how to handle Surgisil. So whatever the examiner did is being carefully scrutinized. Maybe even the higher-ups are actually trying to figure out a policy or guidance that they can give other examiners re: Surgisil. They can’t ignore it (like they can Board decisions) because it comes from the CAFC. So, it’ll be interesting…


              I spoke with the Examiner’s supervisor. It seems that ALL design cases invoking In re SurgiSil are getting upped to the quality assurance specialists. The rationale given was this was being done so the USPTO can figure out a consistent approach to responding to SurgiSil arguments. I’m wondering if they are just engaging in delay until they get a decision from the PTAB “interpreting” SurgiSil.
              If they kick the case back to me with new art and new rejections, I wouldn’t be surprised if they fail to include any mention of SurgiSil, just the usual “arguments are moot because of the new grounds of rejection”. So much for compact prosecution.


                I believe them that they are looking for a consistent approach to handle Surgisil issues. The problem is that it’ll take quite a while for them to do that, witness the lack of guidance regarding Maatita that was decided some time ago.

                1. Thank you, Perry. I just for the consistent approach includes allowing cases instead of just throwing new prior art at the applicant that was just as off the mark as the old prior art.

  7. 5

    This is a valuable and important study.
    Experienced patent attorneys would not have believed those strange old paper-allegations about a low allowance rate of design patent applications, since it is well know that the allowance rate is very high, and has been for a long time. Especially since, as Dennis had noted in his study, almost all design applications rejections are just on formalities. That is, rarely on 35 USC 103 obviousness [as for utility applications] even though the same 103 statute is supposed to apply.
    District courts finding litigated design patents not invalid 88.4% of the time and IPRs 79% of the time is amazing high [at least double?] versus normal (utility) patents. Is this confirming prior blog comments that even though the same 103 POSITA test is supposed to be applied, it is not? [The Sup. Ct. KSR 103 definition has simply been ignored by the CAFC in its design case decisions, never legally distinguished, and a different old CCPA test is used instead.]
    Judicial infringement decisions being above 80% is also much higher, and not surprising in view of the clearly very different claim interpretation-infringement tests and practices for design patents. Plus, the presumed absence of the combined or coordinated pre-trial Markman-S.J. proceedings that are fairly common in utility patent litigation.
    As for not publishing design applications, their normal examination pendency is so short that I assume the vast majority are already issued well before the 18 month publication date of utility applications.

    1. 5.1

      If FactCheckers were a thing here, Paul (once again) would be flagged for “Missing Context – Will Mislead.”

    2. 5.2

      P.S. One argument that was previously made by a leading design patent attorney for the great infringement difference is the assertion that most design patent suits, unlike utility patents, are for direct copies of the article of manufacture covered by the design patent, but that would be hard to statistically prove.

  8. 4

    This is really interesting and well done. I didn’t realize these were myths. Indeed, my sense has been for a while that design patents are far too easy to obtain and assert, and that the rules of obviousness are not parallel to the rules of infringement, often leading to marginally novel patents being asserted against things that are more different from the patent than the patent is from the prior art. (this last statement is wholly unsupported by empirical analysis, I admit)

  9. 3

    I stopped reading after the first paragraph, b/c their premise is baloney. If anything, design “patents” in the US are too strong, being found infringed too often, for things not covered, and are accorded a remedy far in excess of the value of what is covered (see Apple v Samsung – no one bought Samsung phones b/c they had rounded corners similar to Apple’s).

  10. 1

    The recent spate of 100% design patent assertions ending with a finding of infringement suggest that design patentees have really taken to heart the myths that the authors here intend to debunk. Evidently folks are not bringing suit unless they feel that they have a lead-pipe cinch (even more so than the average utility patent assertion).

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