Ten years ago – 2014 – the Supreme Court decided Alice Corp v. CLS Bank, holding that – yes indeed – the expansive language of Mayo v. Prometheus (2012) applies equally to software and technology patents. A few weeks later, the USPTO began a dramatic transformation – pulling back notices of allowance and issuing thousands of supplemental office actions. The Federal Circuit’s May 2024 en banc decision in LKQ v. GM is perhaps as dramatic a change for the design patent arena as Alice was for utility patents. The old Rosen-Durling test made it almost impossible to reject a design patent as obvious except for extreme cases involving either direct copying or extremely broad claims. The key difficulty was that precedent required the obviousness inquiry to begin with a single prior art reference that is “basically the same” as the claimed design – a roughly 1-to-1 relationship. Further, any secondary references had to be ‘so related’ to the primary reference that features in one would suggest application of those features to the other.” In LKQ, the court found those requirements “improperly rigid” under principles of KSR which require a flexible obviousness inquiry. The overall effect is to make it easier to find a design patent obvious.
Immediate Reaction: The decision was released May 21, 2024, and Dir. Vidal released examination guidance to the design corps the next day. The guidance indicated that additional training will be coming soon -“in the short term.” However, it does not appear that Dir. Vidal has, thus far, asked examiners to take a second look at the applications waiting allowance. Design patents continue to issue at a steady rate of about 1,000 per week, with most of those issuing today having received their notice-of-allowances back in Jan/Feb 2024.
Examination Outcomes: Interestingly, I could not find any design patent obviousness rejections coming out of the USPTO since May 22, 2024.* For the same period in 2023, I found a much larger number of cases with obviousness rejections. What I take from this is that it appears that there will likely be an examination slowdown as the USPTO develops its new examination process — understanding what obviousness search and rejection looks like under the new approach.
Note, one difficulty with studying design patent examination is that design applications are generally not published prior to issuance — and abandoned cases are never published. One caveat to this general rule is that design applications claiming priority to Hague Convention filings are open to the public. For my study here, I looked only at those Hague filings.
PTAB: So far we also have no PTAB decisions interpreting LKQ.
Slightly Off Topic:
For an anticipation design rejection, I’ve always presumed the Examiner has to use the image of the finished product rather than how something looks during an intermediary step of a manufacturing process if the Examiner is rejecting the claimed ornamental design (i.e., a finished product).
“ one difficulty with studying design patent examination is that design applications are generally not published prior to issuance”
This is according to statute or is it an administrative choice?
My vague recollection of AIPLA background on that was that it was desired, for international cooperation reasons, for design patent applications to normally issue in less than 18 months, hence no reason to require statutory application publication then. But someone else may have better information.
As for “slowdowns,” the SurgiSil case may have had an effect as well (just ask ipguy).
Very true. The USPTO took the death of 1000 cuts approach while refusing to respond to any SurgiSil arguments. The USPTO made the relatively cheap design patent examination a very expensive proposition through delay and obfuscation.
A design examiner objecting to the title of a design application as being “too descriptive.” They want a very generic title. For example, they object to “tie clip” and want it to be just “clip”.
What basis did the examiner provide for this “too specific” position?
Essentially, the Examiner takes the position that the tile is supposed to identify the article rather than contribute to the description through the inclusion of adjectives descriptive of its physical shape. They cite MPEP 1503.01(I) but otherwise cite no authority for their position.
Another thing occurred to me. An applicant should be able to define their own claim. I wanted to claim “The ornamental design for a clip tie, as shown and described”, and the Examiner objects to the title “clip tie” and requires that all references to it in the application be changed to “tie”, the Examiner is forcing the applicant to change the claim to “The ornamental design for a tie, as shown and described.”
MPEP 1503.01(I): “However, it is emphasized that, under 35 U.S.C. 112(b) , the claim defines “the subject matter which the inventor or joint inventor regards as the invention” (emphasis added); (or for applications filed prior to September 16, 2012, under the second paragraph of pre-AIA 35 U.S.C. 112 the claim defines “the subject matter which the applicant regards as his invention”), that is, the ornamental design to be embodied in or applied to an article. Thus, the examiner should afford the applicant substantial latitude in the language of the title/claim. ”
I like the “substantial latitude” part.
“An applicant should be able to define their own claim.”
“ otherwise cite no authority for their position.”
That’s because they have none. Nowhere is there authority for an examiner to choose what the applicant considers to be their invention.
I believe a polite refusal to change based only on an examiner’s whim is sufficient to rebut the request, but adding “and please provide statutory authority – not MPEP guidance – for such a substantive demand, if the demand is maintained.”
It was. I got a final the other day. I’ve put in calls to the Examiner, and their SPE but no response thus far.
Delay in response = How can we circle the wagons?
“ one difficulty with studying design patent examination is that design applications are generally not published prior to issuance — and abandoned cases are never published.”
This is according to statute or is it an administrative choice?
MM bro, any guess how addicted he truly was?
link to youtube.com
link to youtu.be
I didn’t even remember Gurney Halleck was in deadpool but he totally was.