by Dennis Crouch

The USPTO is officially establishing a separate design patent practitioner bar with its final rule published on November 16, 2023 and effective January 2, 2024.  This is an historic change that opens the door to becoming a patent practitioner to a much wider audience and will likely lend itself to further growth in this specialty area. After proposing the idea in May 2023 and receiving positive feedback, the USPTO implemented the design patent practitioner bar through its rulemaking authority under 35 U.S.C. 2(b)(2).

Currently, a single patent bar governs registration for anyone seeking to practice before the USPTO in utility, plant, and design patent matters. Applicants must meet the fairly high scientific and technical requirements before being permitted to join the bar.  Of course, ornamental design is often a different creature from utility patents. Good design is now very much ensconced within the formal education — but outside of traditional engineering and science programs.  So, although these designers are often design patent inventors, they have been prohibited from becoming patent practitioners.  The new rules introduces an additional path focused on visual arts credentials. To qualify, applicants need a bachelor’s, master’s, or doctoral degree in one of the following fields or an equivalent:

• Industrial design
• Product design
• Architecture
• Applied arts
• Graphic design
• Fine/studio arts
• Art teacher education

These align with degrees the USPTO currently accepts for design patent examiner roles.  Equivalent design field degrees will also be accepted on a case-by-case basis.

The setup here is that the design patent practitioner bar will be separate and distinct from the patent bar.

• Regular Patent Bar: Can continue to prepare and prosecute utility, design, and plant patents.
• Design Patent Bar: Can only prepare and prosecute design patents.

Design patent bar applicants will take take and pass the existing registration exam. This critical step demonstrates knowledge of patent laws, rules, and procedures. All applicants also undergo a moral character evaluation.

I like what the USPTO has done here.  I love good design, and I believe that design patent attorneys and agents can be helpful in that process in a way that circles back to increase innovation in the field.

by Dennis Crouch

In a previous post, I examined the important issue of comparison prior art that emerged from the dispute between Columbia Sportswear and Seirus. This post will focus on another key issue from the case – the relevance of logos in design patent infringement analysis.

The Federal Circuit’s pair of decisions provide guidance on how logos factor into the design patent infringement inquiry, and begin to tease-out differences in policy concerns underlying design patent law versus trademark law. As the court made clear, while logos are often key for avoiding consumer confusion about product source in the trademark sense, the absence of source confusion does not necessarily preclude a finding of design patent infringement. Still, ornamental logos found on the accused product can still be relevant as visual distractors in the process of evaluating similarities and differences between the claimed design and accused design.

Design Patent Infringement vs. Trademark Infringement

The standards for proving design patent infringement and trademark infringement differ significantly regarding the relevance of consumer confusion about product source.

For trademark infringement under the Lanham Act, likelihood of consumer confusion is a key requirement. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). The touchstone is whether ordinary consumers in the relevant market are likely to be confused about the source of the goods. Logos and other source identifiers play an important role in this analysis. A logo prominently displayed on the accused goods that is clearly distinct from the plaintiff’s mark can weigh heavily against finding a likelihood of confusion. See, e.g., Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494 (6th Cir. 2013) (“[The accused infringer] has in fact scrupulously avoided such confusion by choosing a starkly different logo that it prominently displays on its [products] and on all its sales and marketing literature.”).

For design patent infringement, however, likelihood of consumer confusion is not directly relevant. See Unette Corp. v. Unit Pack Co., 785 F.2d 1026 (Fed. Cir. 1986) (“Likelihood of confusion as to the source of the goods is not a necessary or appropriate factor.”). The Federal Circuit has made clear that the sole test is whether the claimed and accused designs appear substantially similar to an ordinary observer, not whether consumers will be confused about source. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665(Fed. Cir. 2008) (en banc) (“[I]n accordance with Gorham and subsequent decisions, we hold that the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.”).

In essence, while both analyses invoke an “ordinary consumer”, the design patent test focuses solely on visual similarity absent any real-world marketplace considerations and asks whether the design has been replicated. The trademark test deeply analyzes real-world conditions and actual consumer viewpoints on source confusion. This leads to divergent treatment of logos and potentially divergent results.

On their face, both the design patent and trademark infringement tests invoke principles of confusion. The ordinary observer test asks whether the resemblance between designs would “deceive” an observer, “inducing him to purchase one supposing it to be the other.” Gorham Co. v. White, 81 U.S. 511 (1871); see also 35 U.S.C. § 289 (“colorable imitation”). And the likelihood of confusion test directly asks whether consumers would likely be confused about the source of goods.  The overt references to “deception,” “imitation” and “confusion” create risk that the separate doctrines could be conflated or misapplied. This underscores the need for precision in explaining that design patent infringement does not consider real-world consumer perspectives, while consumer viewpoints are paramount in trademark analysis. The linguistic parallels make delineating these distinctions even more crucial.

While the Federal Circuit has characterized design patents and trademarks as distinct doctrines, in practice they substantially overlap in protecting product designs that serve as source identifiers. Certain product design features may function simultaneously as ornamental, novel designs eligible for design patent protection and as source-identifying trade dress. For example, a unique shape for a handbag or sneaker may qualify for a design patent based on its ornamentality while also indicating source as trade dress.

What that means is that design patents are often used to protect brand identifiers as commercial source signifiers. But, are able to do so without needing to satisfy the requirements of trade dress or its more substantial fair use and non-functionality doctrines.  In the case of the wavy reflective inner lining — that clearly has trademark meaning in my mind (as a purchaser of winter gloves).  And, it is that marketplace meaning that likely serves as the true basis of the long running lawsuit. So design patents will sometimes grant backdoor trademark-like protection, encompassing design aspects that convey source identity and marketplace meaning.  Ultimately, while the doctrines have distinct requirements on paper, in practice their protections substantially overlap for certain product designs functioning as visual source identifiers.

Columbia Sportswear v. Seirus

This distinction emerged as a key issue in the dispute between Columbia Sportswear and Seirus. Columbia accused Seirus of infringing its design patent covering a wavy pattern design for use on heat reflective material. Seirus argued that differences between its design and Columbia’s patented design – especially Seirus’s prominent and repeated logo – should weigh against finding infringement.

On summary judgment, the district court disregarded Seirus’s logo entirely based on L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), and found infringement. In Columbia I, the Federal Circuit held this was error:

Our precedent does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.

Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019).

The appellate court explained that, while labeling a copy does not avoid design patent infringement, logos still factor into the holistic comparison of the claimed and accused design appearances. Id. The court thus vacated summary judgment and remanded.

On remand, the district court instructed the jury on the ordinary observer test for design patent infringement. But, the district court declined Columbia’s request to instruct that consumer confusion was irrelevant and that likelihood of confusion need not be found. The jury returned a verdict of non-infringement.

In Columbia II, the Federal Circuit affirmed the jury instructions given were legally correct. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299 (Fed. Cir. Sept. 15, 2023). The court sympathized with concerns that the ordinary observer test’s language referencing deception risked conflation with concepts of consumer confusion. But it found no reversible instructional error, reiterating that logos remain relevant to the overall similarity analysis:

[J]ust because consumers might not be confused about an accused product’s source, that alone would not preclude an ordinary observer from deeming the claimed and accused designs similar enough to constitute design-patent infringement.

Id. (emphasis in original; citing Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815 (Fed. Cir. 1992)).

These decisions offer important insight and guidance for attorneys in the trenches, and also highlight a need to reconcile the doctrines to ensure that they are serving important societal goals.

Guest Post by Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

Wepay Global Payments LLC v. PNC Bank, N.A. (W.D.Pa. June 1, 2022) [wepayDecision]

Companies associated with William Grecia have filed over a dozen cases alleging infringement of design patents for “animated graphical user interfaces.” A judge in one of those cases, Wepay v. PNC Bank, recently issued a decision dismissing the case.

The patent asserted in that case, U.S. Patent No. D930,702, was issued in 2021 and claims a “design for a display screen portion with animated graphical user interface.” Wepay alleges infringement of the second embodiment, which includes three images:

Consistent with the USPTO’s rules for “changeable computer generated icons,” see MPEP § 1504.01(a)(IV), the patent specifies that, “[i]n the second embodiment, the appearance of the     sequentially transitions between the images shown in FIGS . 3 through 5. The process or period in which one image transitions to another image forms no part of the claimed design.” Consistent with the USPTO’s general drawing rules, the patent disclaims all matter shown in broken lines “form[] no part of the claimed design.”

So what does this patent cover? According to the court, Wepay seemed to think its patent covered any app with a QR code that lets you send money to other people:

WPG maintains that both its patent and the PNC app include an icon array of three squares that simulate a QR code; both cycle to a functional screen where the user may choose to whom the money will be sent; and both conclude with the display screen with a display of a zero value, where the user may input the amount of money that the user wishes to send.

The court rejected that interpretation—and rightly so. It’s well-established that design patents cover the visual designs that are actually claimed, not the larger design concepts.

The court held that the claimed designs and accused design, shown below as shown in the complaint, were plainly dissimilar and granted PNC’s motion to dismiss.

In doing so, the court recognized that placement and proportion matter in design, noting that “[a]ny similarity between the two designs is limited to basic geometric shapes, but with notable differences in shape size and spacing such that no ordinary observer would mistake the Accused Design with the Asserted Design or vice versa.”

Some may argue that the court erred in considering the placement and proportion of the claimed design fragments, because matter shown in dotted lines “forms no part of the claimed design.” But even if other visual portions of the design are disclaimed, that doesn’t mean courts have to treat the claimed portions as free-floating motifs. (Indeed, sophisticated design patent owner Nike has recognized that placement matters, even when dotted lines are used. See this PTAB decision at 10-13.)

I’ve explained here, placement and proportion are essential elements of design. The differences between the claimed and accused designs here are an excellent example of how different a single motif (e.g., each of the three squares in figure 3 and in the accused design) can look in the context of the design, depending on its proportion to the other elements and where it is located on the screen.

Before diving into the merits, however, the court expressed some doubt over whether infringement was even possible in this case:

[T]he Court notes that the ordinary observer test focuses on a hypothetical purchaser induced to buy a product with an accused design over an asserted design. The cases cited by the parties likewise address designs where there exists a consumer and/or purchaser at play. However, neither the cited cases nor this Court’s research reveals a case where, like the instant matter, the consumer has not voluntarily chosen the design at issue. Instead, the Accused Design is incidental to the PNC customers utilization of the mobile application. The Complaint does not allege that a purchaser would have been or has been involved with the Accused Design. Further, the Complaint does not allege a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design. Thus, the ordinary observer test would seem not to fit squarely with the designs at issue, and WPG would not be able to assert a design patent infringement claim.

Even though it’s dicta, the court’s suggestion that a design patent owner must plead “a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design” is worth further discussion.

Like other patents, a design patent is infringed when someone makes, uses, sells, offers to sell, or imports the patented invention without permission. The test for design patent infringement doesn’t change that. It just tells us when someone is making, using, selling, offering to sell, or importing the patented design.

The test for design patent infringement is a test of visual similarity. The “ordinary observer” part just tells us how similar the designs must be. (See this article at page 177.)

So, under current law, no sale is required, let alone—as the court seems to suggest—a direct sale to the end user, “with regard to the Accused Design over the Asserted Design.” Indeed, because there is no working requirement for design patents, there may not be a product embodying the claimed design available for sale.

All the defendant has to do is make (or sell, etc.) a product that looks “the same” as the claimed design. (For more on how the test for design patent infringement works, see this essay or Chapter 12 of this free casebook.)

Because Grecia-related companies have filed so many similar cases, it seems likely this decision will be appealed. It is definitely one to watch.

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.

by Dennis Crouch

WIPO administers the WIPO-administered Hague System for the International Registration of Industrial Designs.  In 2015, the US linked its design patent system with Hague — this gives U.S. designers easier access to global design rights; and non-U.S. applicants easier access to the U.S. market.  This week, China announced that it is also joining the system.  Even without being part of Hague, IP offices around the globe have received huge increases in Chinese -origin industrial design applications.  For instance, 55% of global design applications filed in 2020 were by Chinese residents.

The first chart below shows the impact in the U.S. design patent system. For the first time in 2021, most new U.S. design patents originated from outside of the U.S.; with Chinese-origin design patents taking the clear quantitative lead over all other nations.  The second chart shows the rise in design patents (and design patent applications) over the past several years.