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.
On May 22, 2024, the day after the Federal Circuit’s en banc LKQ v. GM decision, the USPTO issued a memorandum to its examiners providing updated guidance and examination instructions in light of the court’s overturning of the long-standing Rosen-Durling test for determining obviousness of design patents. The memo, signed by USPTO Director Kathi Vidal, aims to immediately align USPTO practices with the more flexible approach outlined by the Federal Circuit, which eliminated the rigid requirements that: (1) a primary reference be “basically the same” as the claimed design, and (2) secondary references be “so related” to the primary reference that features in one would suggest application to the other. This is a major shift in examination practice for design patents so it will be important to watch the developments to see whether the office ramps up design examination. (more…)
In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test’s requirements that 1) the primary reference must be “basically the same” as the claimed design, and 2) any secondary references must be “so related” to the primary reference that features from one would suggest application to the other, “impose[] limitations absent from § 103’s broad and flexible standard” and are “inconsistent with Supreme Court precedent” of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 “applies to all types of patents” and the text does not “differentiate” between design and utility patents. Therefore, the same obviousness principles should govern. This decision will generally make design patents harder (more…)
Seirus has petitioned for writ of certiorari in its long-running design patent dispute with Columbia Sportswear. The petition asks two questions related to the comparison process for design patent infringement — in particular, the questions focus on what can qualify as “comparison prior art” used to provide context for the infringement analysis.
On Monday, February 5, 2024, the Federal Circuit will sit together for the first time in years to hear an en banc patent case. In LKQ Corporation v. GM Global Technology Operations LLC, the court will consider whether to apply a more stringent obviousness test to design patents. In a 2010 article, I concluded that “the current design patent examination system operates as a de facto registration system” with very little obviousness analysis except in cases of clear copying. Although design patent examination has become more rigorous, obviousness rejections remain relatively rare in comparison to their utility patent brethren.
Oral arguments will include the 11 Federal Circuit judges (absent Judge Newman) along with Mark Lemley (arguing for the accused infringer and seeking a more rigorous obviousness test); Joe Herriges (arguing for the patentee GM largely seeking to preserve the status quo); and USPTO Acting Solicitor Farheena Rasheed (for amicus USPTO). The case particularly focuses on whether the Supreme Court’s flexible test for obviousness from KSR v. Teleflex also applies to design patents. In particular, the Federal Circuit’s Rosen-Durling test for design patent obviousness requires a primary reference as a starting point that is “basically the same” as the design being patented. Lemley would throw out this approach entirely. In its brief, the USPTO agrees that KSR requires more flexibility and that Rosen-Durling is “overly restrictive in several respects.” However, the USPTO suggests retaining the basic framework as a standard approach to obviousness, while permitting other approaches as necessitated by particular cases — allowing for both flexibility and the application of common sense.
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.
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.
As Professor Crouch has noted, the Federal Circuit has granted rehearing en banc in the design patent case of LKQ v. GM. The main question raised in the petition for rehearing—and in the court’s order granting that petition—is the continuing viability of the Rosen primary reference requirement for evaluating whether a design is obvious under § 103.
The court has ordered briefing on the issue of whether Rosen and Durling (the Federal Circuit case that expanded upon the Rosen approach) were overruled, abrogated, or otherwise affected by the Supreme Court’s decision in KSR and, if so, what the test should look like going forward. For my own thoughts on those issues, see this article and this post. (Tl;dr: The primary reference requirement is good but the Federal Circuit has applied it too strictly.)
In this post, however, I wanted to discuss another issue raised by the court. In granting LKQ’s petition for rehearing, the court asked:
To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?
These are good questions and well worth discussing. They also stood out to me in light of some of the arguments that were made at the petition stage.
In support of LKQ’s petition for rehearing, some of my friends and colleagues submitted an amicus brief wherein they argued against what they called “design patent doctrinal exceptionalism.” According to these amici, “except where Congress has explicitly specified otherwise, there should be no ‘exceptional’ approach to design patent law doctrines that render them different from utility patent law doctrines. Congress, not the Supreme Court, has imposed this requirement of consistency.” I respectfully disagree.
Section § 171(b) provides: “The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” But the statute says nothing about legal “doctrines.” It refers only to the statutory “provisions.” Saying that a statutory provision applies to design patents is very different than saying that judicial decisions about how to apply that provision to utility patents also apply to design patents.
Indeed, due to the differences between utility patent and design patent claims, neither courts nor the USPTO could directly import those rules anyway. Design patents cover different things (ornamental designs as opposed to useful inventions). They are claimed differently (using central as opposed to peripheral claiming). They are fundamentally different types of patents. General principles may be transferrable but the actual tests are generally not.
Consider novelty. Section 102 says a patentable invention must be novel. Section 171(b) says that this requirement of novelty applies to designs. But that doesn’t mean that the judicially-created tests for determining when a useful invention is novel also must be used to determine when a design is novel.
A useful invention is deemed not to be novel if all of its elements can be found in a single prior art reference. But design patent claims don’t have elements in the same way that utility patent claims have elements. (A design patent claim consists of a pro forma verbal portion that incorporates by reference drawings that show the claimed design.) So courts can’t simply apply the “all elements” rule to design patents. Instead, courts have, quite rationally and fully consistent with § 171, developed a different anticipation test for design patents (for more on that test, see this short piece). That’s not “design patent exceptionalism,” it’s a thoughtful and appropriate application of a generally-applicable statutory requirement to a fundamentally different type of patent.
A similar problem occurs with § 103. Because design patent claims don’t have “elements” in the way utility patent claims do, we can’t just apply the utility patent mix-and-match approach to design patents.
Some might argue that we could just let litigants chop up design patent claims into “elements” in litigation and let them fight it out utility-patent style. But that would be inconsistent with longstanding case law emphasizing that the thing protected by a design patent is the design as a whole. It would also be inconsistent with design theory. Not to mention the significant litigation and uncertainty costs such an approach would entail.
A visual design isn’t simply a collection of visual pieces. It is, as a group of amici explained during Apple v. Samsung, a “cohesive and integrated whole.” While it might be technically obvious to take existing visual pieces and recombine them into new shapes or surface designs, that doesn’t mean that doing so always (or even often) creates a visually obvious result.
It’s true that actual designers don’t (often and definitely not always) start designing by taking a primary reference and modifying it. But the question of what we should deem obvious is ultimately a policy question, not a factual question about the actual processes of invention. Cf. The “Winslow tableau.” There’s nothing irrational about saying that, as a policy matter, we don’t think a design should be deemed visually obvious when there’s nothing that looks “basically the same” in the prior art.
This, of course, means that we need a concept of what looks “basically the same.” In particular, there needs to be a meaningful difference between what is deemed “basically the same” (i.e., similar enough to be a primary reference) and “the same” (i.e., similar enough to anticipate/infringe). The way the Federal Circuit has been applying Rosen doesn’t seem to leave much blue sky between those two concepts. But that is a problem with the application of Rosen, not a problem with Rosen itself.
One more thing: It’s true that it’s difficult to invalidate design patents. (If you’re tempted to ask about those old studies, read this.) It’s also true that the Rosen approach leaves some plainly uncreative designs immune from § 103 attacks—or at least, from successful ones. But maybe § 103 isn’t the best way to address that issue. Maybe, as I argue in this forthcoming article, courts should start taking the originality requirement of § 171(a) seriously.
Design patents continue to rise in importance, but the underlying law full of eccentricities. The crux of the issue lies in the manner patent law decisions are typically written. Most of precedential patent decisions are penned with a strong focus on utility patent doctrine, yet, surprisingly, the same patent doctrines of novelty, obviousness, definiteness, enablement, and written description are also applicable in the realm of design patents.
The Federal Circuit has decided to reevaluate this dichotomous situation specifically in relation to the question of obviousness. The case under scrutiny is LKQ Corp. v. GM Global Tech, 21-2348 (Fed. Cir. 2023). The court has set forth six key questions for the parties to consider:
A. Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?
B. Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting “a rigid rule that limits the obviousness in-quiry,” 550 U.S. at 419, and adopting “an ex-pansive and flexible approach,” id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement that “[b]efore one can begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design,’” 101 F.3dat 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s require-ment that secondary references “may only be used to modify the primary reference if they are ‘so related to the primary reference that the appearance of certain ornamental fea-tures in one would suggest the application of those features to the other,’” id. at 103 (quot-ing In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).
C. If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?
D. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.
E. Given the length of time in which the Rosen-Durling test has been applied, would eliminat-ing or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?
F. To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?
The case itself involves design patents covering GM parts, such as front fenders. See D797,625. The existence of the design patent means that repair parts must come from authorized manufacturers and channels. For years, auto insurance companies and others have argued that this improperly raises costs.
The original appellate decision was non-precedential and supported the PTAB IPR decision that the patent challenger failed to demonstrate obviousness. The court relied on the tests delineated in Rosen & Durling, putting a spotlight on a primary reference that ought to be “basically the same” as the claimed design. Notably, this is a substantially different approach than the one employed in utility patent obviousness doctrine.
The original panel was composed of Judges Lourie, Clevenger, and Stark. Though the panel released a per curium opinion, separate opinions were also issued by Judges Lourie and Stark. Judge Lourie expressed his conclusion that it is totally acceptable for the design patent obviousness test to be different from that in utility patents. “Obviousness of an ornamental design thus requires different considerations from those of a utility invention.” Judge Stark disagreed with the majority opinion on a procedural grounds (forfeiture of certain arguments).
Barry Irwin teamed up with Profs Mark Lemley and Mark McKenna for the en banc petition. Joseph Herriges and John Dragseth from Fish & Richardson represent GM.
The court specifically invited the US Gov’t to file an amicus brief and also welcomed additional briefs of amicus curiae — noting that they “may be filed without consent and leave of the court.” If you support LKQ (making it easier to invalidate design patents), amicus briefs will be due in late August. If you support GM, briefs will be due in late September.
The United States Patent and Trademark Office has proposed a rule to create a separate design patent practitioner bar. The USPTO is publishing this proposal in the Federal Register on May 16, 2023 (link below to the prepub).
As it stands today, there is a single patent bar that applies to those practicing in patent matters before the USPTO, covering utility, plant, and design patents. And, even though design patents cover ornamentally, the current rules require that the design patent practitioner be an engineer or scientist.
The proposed rule aims to establish an additional separate bar for those who only specialize in design patents, ensuring that they have the necessary qualifications, while opening the door to non-engineers. The proposal appears to not affect those already registered to practice. Existing patent practitioners will continue to practice as before, and new applicants who meet the current criteria, including passing the existing registration exam, will also be permitted to practice in all patent matters, including design patent matters.
In Fall 2022, the USPTO asked for comments on proposals in this direction and received mostly positive comments. Stakeholders acknowledged that the move would encourage broader participation in the patent system.
The proposal would still have a ‘technical’ requirement, typically a degree in one of the following: industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education. The degree requirements here align with the current hiring practices of the USPTO for design patent examiners. In addition to the degree requirements, applicants would have to meet the other requirements to register for the bar, including taking and passing the current registration examination and passing a moral character evaluation.
The USPTO will accept comments on the proposed rulemaking through August 14, 2023 via the regulations.gov portal.
By Sarah Burstein, Professor of Law at Suffolk University Law School.
Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 21-2299 (submitted but not decided) (oral argument recording available here)
The Federal Circuit heard oral arguments yesterday in the second round of Columbia v. Seirus. (Prior Patently-O coverage of this appeal is available here.) My 2015 article, The Patented Design, was mentioned several times during the argument.
In that article, I argued that a design patent’s scope should be limited to the design as applied to a specific type of product. In making that argument, I acknowledged that this approach could create some line-drawing problems, including the type that have arisen in Columbia v. Seirus. I suggested that, with respect to infringement:
[O]ne solution would be to put the burden of proof on the patent owner to show that the accused device should be considered the same type of product. Courts have been tasked with determining which products are and are not the same “type” of product in the trademark context; there is no obvious reason why they should not be able to do the same in the design patent context.
If, however, the line-drawing problem proves to be intractable, an alternative would be to determine product “types” according to the Locarno Agreement Establishing an International Classification for Industrial Designs. Specifically, “type of product” could be defined to map onto Locarno sub-classes. For example, Locarno Class 10 includes subclasses for “Clocks and Alarm Clocks,” “Watches and Wrist Watches,” and “Other Time-Measuring Instruments.” The Locarno classification system is not perfect for this use but it may provide a second-best solution if judicial common law development proves unworkable.
Sarah Burstein, The Patented Design, 83 Tenn. L. Rev. 161, 219–20 (2015) (footnotes omitted). So my argument was not that design patent scope (and in this case, the scope of comparison prior art) must be limited to the exact, specific type of article named expressly in the verbal portion of the design patent claim.
Instead, I argued that courts should look to whether the accused product (or reference) is the same general type of article.
I also suggested that the product type could be determined with reference to Locarno sub-classes. How might that work in practice?
Looking at the dispute in Columbia v. Seirus, the most relevant class would seem to be Class 5, “Textile piece goods, artificial and natural sheet material.” Here are the relevant class subheadings:
So which subclass(es) would apply here? This case is an example of how the “substantial latitude” that design patent applicants are given in describing the relevant article in their claim language, see MPEP § § 1503.01(I), might sometimes complicate later attempts at classification.
The asserted design patent, U.S. Patent No. D657,093, claims “the ornamental design of a heat reflective material.” The only Class 5 subclass heading that uses the word “material” is 05-06, “Artificial or Natural Sheet Material.” But the patented design seems to be directed more to something like the examples mentioned in subclass 05-05, “Textile Fabric.” (Indeed, if you look closer at the full Locarno Classification, subclass 05-05 specifically includes ID No. 100480, “Insulating fabrics.”)
So which bucket would the D’093 fit in best? Where classification is disputed, the burden of persuasion should be on whichever party wants to prove something is the same type of product.
For infringement, then, the patent owner should have to prove the accused product is the same type as what is claimed. For comparison prior art, the accused infringer should have to prove the reference is the proper type. (This is because the use of the prior art in evaluating infringement is a one-way ratchet; it can only be used to narrow the presumptive scope of a claim, not to enlarge it. See Sarah Burstein, Is Design Patent Examination Too Lax?, 33 Berkeley Tech. L.J. 607, 612 (2018).)
Evidence relevant to this inquiry could include information about any commercial embodiments, including information the patent owner has provided to regulators about their product or market. And if a patent owner has registered their design internationally, the design may already have a Locarno sub-class.
Who should decide? Judges would be well-suited to make these types of determinations. Indeed, these issues are likely to arise at the Markman stage or, as in Columbia v. Seirus, in motions in limine. This is not the kind of credibility or historical-facts determination that we normally leave to juries. Indeed, it’s difficult to imagine a way to effectively instruct juries on this issue without injecting undue confusion into the infringement analysis.
Comments should be submitted by Jan 17, 2023 via the eRulemaking Portal.
Earlier in 2022, the USPTO made some minor expansions to the criteria for registering as a patent attorney, but this new proposal offers the possibility of a broader inclusive market and a mechanism for the Office to regularly update eligibility criteria. It also asks whether there should be a separate bar for design patent practitioners. Things could get really interesting (in a good way) if folks trained in design (rather than engineering) start participating at the USPTO level.
On the PTAB side, the PTO is seeking comments about whether non-patent-attorneys should be permitted to represent clients in AIA proceedings. The USPTO also asks about potential development programs such as LEAP.
The pending appeal in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 2021-2299 (Fed. Cir. 2022) raises a number of important design patent law questions, including an issue of first-impression of the scope of “comparison prior art” available for the ordinary observer infringement analysis under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) and its key predecessor Smith v. Whitman Saddle Co, 148 U.S. 674 (1893). Since Egyptian Goddess, the Federal Circuit has placed renewed importance on the claimed “article of manufacture,” but not in the comparison portion of infringement analysis.
In 2021, the Federal Circuit issued the important, albeit short-winded, design patent decision In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021). In SurgiSil, the court held that the particular article-of-manufacture recited by the claims should not be ignored, even for anticipation purposes. SurgiSil’s cosmetic lip implant has a remarkably similar shape to lots of other two-pointed cylinders. As an example, the image above shows the SurgiSil lip implant (bottom) compared against a prior art blending stump (top) sold by Blick.
The PTAB found SurgiSil’s claim anticipated, but the Federal Circuit reversed–holding that a blending stump does not anticipate a lip implant.
Utility patent attorneys are familiar with the Schreiber decision that allows for non-analogous art to be used for anticipation rejections. In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997)(“whether a reference is analogous art is irrelevant to whether that reference anticipates”). In some ways, Schreiber could be seen as intension with SurgiSil. In reality though the two decisions fit well together and SurgiSil did not make a special design patent rule or reject Schreiber. Rather, Surgisil simply interpreted the claim at issue as requiring a lip implant and then found that a non-lip-implant didn’t satisfy that claim limitation. I will note that SurgiSil was a patent applicant’s appeal from the USPTO. The case was remanded back to the USPTO 10 months ago, and not patent has issued yet. I expect that the examiner has now rejected the claim on obviousness grounds.
SurgiSil, coupled with the court’s prior decision in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), place new weight on the claimed ‘article of manufacture.’ On open question is how this focus should play out in the infringement analysis under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc).
A design patent’s scope is typically determined by its recited article of manufacture and single embodiment shown in the drawings. An accused design does not have to exactly match the drawings. Rather, what we do is ask whether an “ordinary observer” would be deceived that the accused design is the patented design. Egyptian Goddess. Before making the comparison, the ordinary observer is supposed to become familiar with the prior art (if the issue is raised). The prior art is used to help measure the scope of the claims. If there is no prior art remotely similar, then the patented design is going to be given a broader scope by the ordinary observer; on the other hand, when the prior art is quite similar to the patented design the patent scope will be narrow. Of note, comparison prior art is only used at the accused infringer’s behest, and so the issue will strategically arise only when the defendant has evidence of very similar prior art.
The open question: What prior art should we look to when making a comparison? That question is before the court in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 2021-2299 (Fed. Cir. 2022) (pending before the Federal Circuit). In the case, the accused infringer (Seirus) had some spot-on comparison prior art, the only problem is that the references were sourced from disparate articles of manufacture far afield from Columbia’s claimed “heat reflective material.” The case is potentially big because of the profit disgorgement remedy available in design patent cases. 35 U.S.C. 289 (“[the infringer] shall be liable to the [patent] owner to the extent of [the infringer’s] total profit”). And, we might expect a strong potential that a decision here on the infringement side will reflect-back to also apply in any obviousness analysis.
I have written before about the Columbia v. Seirus lawsuit that involves the reflective (but water permeable) inner layer that both use to line their cold weather gear. Columbia’s Design Patent No. D657,093 claims the “ornamental design of a heat reflective material” as shown the drawings. As you can see from Figures 1 and 2 below, the design shows a wave-like design, which the inventor (Zach Snyder) says was inspired from his time living in Arizona and seeing heat ripple mirages rising from the ground.
The Seirus product is similar and uses a wave/ripple design. Early Seirus products lacked branding, but Seirus later added its brand name to the designs in order to promote its brand and avoid confusion. If you have seen these designs on apparel liners, it is coming from Seirus brand. Although Columbia has the patent, the company initially launched its product using a pixilated design (covered by a separate design patent) and later decided to not adopt the wave in order to avoid confusion with Seirus.
At trial, the jury was shown images of the patent as well as the accused product in order for it to conduct the ordinary observer test. The Egyptian Goddess infringement analysis also requires consideration of the prior art. Seirus presented some visually close references, including a 1913 utility patent covering the inner tire liner. (Fig 5 below from US1,515,792). The court limited the scope of comparison prior art to only fabrics for the Egyptian Goddess comparison. That tire patent was allowed because the inner layer was in a fabric form.
At trial, the jury sided with the defendant Seirus and found the patent not infringed.
Now on appeal, the patentee argues that infringement analysis prior art (“comparison prior art”) should be limited by the patent’s stated article of manufacture. If the Columbia court had limited comparison prior art to only those showing “heat reflective material,” it would have all been excluded. But, the district court allowed-in the prior art from unrelated arts, and then went further by precluding Columbia from asking the jury to reject the unrelated comparison prior art. The basic idea for limiting comparison prior art stems from the same notions expressed by the Federal Circuit in SurgiSil and Curver Luxembourg: design patents do not cover bare designs but rather designs “for an article of manufacture.” 35 U.S.C. 171. And, that “article of manufacture” portion of the law should remain at the forefront of all design patent doctrines. In Egyptian Goddess, the patent covered the “ornamental design for a nail buffer” and all the comparison prior art references were also nail buffers. 543 F.3d 665 (Fed. Cir. 2008). Likewise, in Whitman Saddle, the design patent at issue was directed to a “design for a riding saddle,” and the prior art used in comparison was also a riding saddle. 148 U.S. 674 (1893). But, the district court in Columbia refused to limit comparison prior art to only the same article of manufacture. The district court concluded that such a ruling would improperly import too much functional into the design patent right — design patents cover form, not functionality.
In my view, Columbia’s proposal of a strict article-of-manufacture limitation is too limiting because it does not reflect the perspective of either a designer or an ordinary observer and because it offers the potential opportunity for undue gamesmanship in the writing of the claims. As an alternative rule of law, the patentee suggests that the scope of comparison prior art be limited to articles that are either the same article of manufacture or “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs” This test comes from Hupp v. Siroflex of Am., Inc., 122 F.3d 1456 (Fed. Cir. 1997) and was used to define the scope of prior art for an obviousness test rather than comparison prior art for the infringement analysis. But, it seems to roughly make sense that the same scope of prior art should be considered both for obviousness and for infringement analysis — although obviousness is from the perspective of a skilled designer and infringement is looks to the ordinary observer (i.e., consumer).
I would argue that even Columbia’s broader alternative approach is too narrow. In Columbia’s asserted patent, the images (below) show the use of the material as an inner liner for various articles of clothing as well as an outer liner for a sleeping bag. It would make sense to me that an ordinary observer might be deceived by other apparel liners using the same wave, even if not “heat reflective;” and thus that a jury should be permitted to consider those products as comparison prior art in the Egyptian Goddess infringement analysis. Unfortunately for Columbia, my broader notion of comparison prior art makes their case difficult since at least one of the comparison references shown to the jury was the wave pattern used as the outer liner of a rain jacket, US5626949, and all of the references are some form of fabric. Further, in some ways Columbia opened the door to a very broad scope of comparison prior art by including Figure 1 (shown above) claiming the material as a pattern apart from any particular application (such as those shown in other figures).
There are two primary procedural mechanisms to limit the scope of comparison prior art. (1) exclude prior art from consideration as irrelevant; (2) allow the jury to consider the evidence, but allow the parties to also introduce evidence regarding the extent that the prior art might influence the ordinary observer or skilled artisan. These are all issues that folks have repeatedly worked through (and continue to argue about) with regard to validity and obviousness in utility patents, but they remain undecided in the design patent infringement context post Egyptian Goddess. The appellate brief asks three particular questions on point:
What is the relevant scope of “comparison prior art” that is to be considered in a design patent infringement analysis?
Is it error to instruct the jury that all prior patents are comparison prior art to a design patent, and to fail to instruct the jury to limit the scope of comparison prior art to those related to the claimed article of manufacture?
Was it an error to prohibit Columbia from distinguishing comparison prior art on grounds that it failed to disclose a the claimed article of manufacture?
Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. (Fed. Cir. 2022) (Appellant’s opening brief).
Now lets talk about the Logo. The figure above might be the key exhibit of the whole case. The figure shows the Seirus design with an overlay from Figure 2 of the Columbia patent. As you can see, the waves fit up almost perfectly (after a bit of resizing). A detailed analysis can find other differences in the waves, but the key visual difference is the repeated Seirus logo.
The importance of those logos was a key element of the prior appeal in the case. Columbia Sportswear N.A., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (Columbia I) The leading precedent of L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993) indicates a copycat cannot escape design patent infringement by labelling products with a different trade name. (Images of the L.A. Gear patent and Accused infringer below). In Columbia I, the Federal Circuit distinguished L.A. Gear by explaining that the 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.” Id. Rather the logo should be considered for its “effect of the whole design.” Id. (Quoting Gorham).
In the second trial, Seirus spent some time focusing on the logos as important design elements and that may well have made the difference for the jury. In particular Seirus provided evidence that the logos were arranged and designed in a decorative way to be both ornamental and to catch attention. In addition, the logos are used to break-up the wave so that folks don’t get hypnotized. In other words, the logos were more than mere labeling. Still, on appeal Columbia has asked the appellate court to address these issues once again in the form of objections to the jury instructions:
Did the court err by failing to instruct the jury – that in this case – confusion (or lack of confusion) as to the source of goods “is irrelevant to determining whether a patent is infringed?” Columbia suggests that the problem comes about with the infringement instructions that focus on “deceiving” consumers. Columbia also implies that in some cases customer confusion as to source could be relevant evidence — such as in cases where the patentee also manufactures a product covered by the patent. Here, however, Columbia does not practice the patented invention.
Did the court err by failing to instruct the jury that “Labelling a product with source identification or branding does not avoid infringement?” (Quoting L.A. Gear). This final question appears to be rehashing the issue decided in Columbia I and so has presumably become unappealable law of the case. For its part, Columbia argues that “[t]o the extent Columbia I is in conflict with Unette, Braun, or L.A. Gear, the prior cases control.” On this point, it appears that Columbia may be preserving the issue for en banc or Supreme Court review.
Golden Eye Media USA v. Evo Lifestyle Products (Fed. Cir. 2022) (nonprecedential).
Evo’s design patent claims an “ornamental design for a foldable bag” as shown in the figures above. This style of bag is known as a “trolly bag” in the UK and is used in shopping carts (trollies) to maintain order in reusable fashion.
After receiving a threat letter, Golden Eye filed a declaratory judgment action and won on summary judgment. In particular, the S.D.Ca. district court held the patent invalid as both functional and obvious; and also not infringed.
Functionality: Design patents focus on ornamentality rather than utility. But, this divide quicky become confusing. Although the design must be ornamental, it is simultaneously a “design for an article of manufacture.” I.e., typically a design for a useful item. The Federal Circuit has attempted to police this divide in a number of cases — trying to discern whether the design is unduly functional (and thus unpatentable as an ornamental design). Certainly, a design falls on the unduly functional side if its patent excludes all possible forms of the article of manufacture in question. A step further, the court has concluded that a design “dictated by the utilitarian purpose of the article” is not protectable by a design patent. High Point Design LLC v. Buyer’s Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013). In several cases, the court has recited a list of additional factors to consider:
Does the patent cover the “best design;”
Would alternative designs adversely affect the article’s utility;
Are there parallel utility patents;
Does the advertising tout features as having utility;
Are there any elements that are clearly ornamental – i.e., “clearly not dictated by function.”
See Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997). Although functionality is a question of fact, the Federal Circuit affirmed that summary judgment was appropriate — finding “no issues of material fact precluding summary judgment.”
Of these factors, the most important appears to be the availability of alternative designs. The quirk with that key factor is that the burden will be placed on the patentee to present those alternative designs even though the patent is presumed valid.
Obviousness: The court also affirmed on obviousness grounds — finding that an Irish patent filing by Trolly Cart founder (Doyle) created the same overall impression and that the only real difference in cloth handle length that was shown in other prior art bags.
Again, the appellate panel found that summary judgment of obviousness was appropriate. Obviousness is a question of law based upon underlying factual conclusions and summary judgment is appropriate when “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute.”
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. (Seethis 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, seethis 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.
By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law
In December 2020, the USPTO put out a request for comments on “The Article of Manufacture Requirement.” (For prior PatentlyO coverage, see here.) Last week, at Design Day 2022, the USPTO announced that it had completed its summary of those comments. That summary is available here.
In the request for comments, the USPTO floated the idea of issuing design patents for what they are now calling “designs for projections, holograms, and virtual and augmented reality (PHVAR).” Presumably, this acronym is meant to suggest that these are new types of designs, uncontemplated by Congress when it passed statutes that—according to some—are in need of “modernization.”
But projected designs aren’t new.
As we explained in our law professor comments, designs for “magic lantern” projections go back at least as far as the 17th century. So the concept of projected designs was well-established by the time Congress passed the first design patent act in 1842—not to mention when it codified the Patent Act in 1952. Projected designs are simply not some new, unforeseen concept.
There may be new types of projection machines today, but this type of design is not new.
The USPTO suggests that the scope of design patentable subject matter “should be reevaluated in order to incentivize and protect innovation in new and emerging technologies.”
But it is not—and should not—be the role of the design patent system to incentivize or protect new machines. We have utility patents for that.
Furthermore, projected designs are not as the USPTO seems to suggest, unprotected today. Projected images qualify as pictorial, graphic, or audiovisual works that are already protected—costlessly and immediately upon fixation—by copyright. It can’t be seriously suggested that Congress was unaware of projected designs when it passed the broad definitions of protectable subject matter in the Copyright Act of 1976. It’s clear from the definitions that one form of projected creativity, cinema, was very much on Congress’ mind. See, e.g., 17 U.S.C. § 102(a)(6) (providing protection for “motion pictures and other audiovisual works.”).
Again, the type of projector may be new, but the type of work is not.
So why push for design patents when copyright is already available? There may be some who just want to accrue as many belts and suspenders as their IP budgets will allow. But that alone is not a good enough reason to expand design patentable subject matter.
It may be that, for at least some potential applicants, the goal is to avoid the requirements of copyright law. In Feist v. Rural, the Supreme Court held that a work must have “minimal creativity” to be protected. Thus, to gain copyright protection, a work must “possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.” This is, according to the Supreme Court, a requirement of the Progress Clause.
Minimal creativity is a low bar. Yet the USPTO has granted numerous design patents for designs that fall below it—especially in the context of computer-generated designs. In theory, novelty and nonobviousness could be a higher bar but, in practice, that is not the case.
So let’s all be clear:
These are not new types of designs.
They’re not unprotected—unless they fail to meet the low constitutional threshold set in Feist.
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.
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.
This is an important design patent decision that substantially narrows the scope of prior art available for anticipation rejections in design patent cases. The result is that it should become easier to obtain design patent protection. The decision is only about 600 words long — fewer than may writeup about the case.
My children have a variety of paper stumps that they use for smoothing and blending their pencil drawings. The first image below shows a typical paper stump that artists have been using for many decades. The second image shows the design for Surgisil’s article of manufacture that it is attempting to patent (design patent). I also recall being fascinated by double-sharpened pencils that you can see in the third image.
Although the three are basically identical in shape, Surgisil still believes it should be able to obtain a design patent because its patent is directed toward something different, the “ornamental design for a lip implant.”
The USPTO examiner rejected Surgisil’s claims and the Patent Trial & Appeal Board affirmed. The PTAB held particularly that for anticipation purposes, “it is appropriate to ignore the identification of the article of manufacture in the claim language.” Further, although these might not be analogous art, “whether a reference is analogous art is irrelevant to whether that reference anticipates.”
On appeal the Federal Circuit reversed and instead held that the Surgisil’s claim language limited its invention to a design for “lip implants.” As such, prior art directed to drawing stumps and pencils do not anticipate a lip implant. The court explains:
Here, the claim identifies a lip implant. The claim language recites “a lip implant,” and the Board found that the application’s figure depicts a lip implant, As such, the claim is limited to lip implants and does not cover other articles of manufacture. There is no dispute that Blick discloses an art tool rather than a lip implant. The Board’s anticipation finding therefore rests on an erroneous interpretation of the claim’s scope.
Slip Op.
The decision here goes a bit further than Court’s 2019 decision in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019). Curver Luxembourg held that a particular claim was limited to the wicker pattern applied on an the article of manufacture recited in the claim (a chair) and thus did not cover the use of the same pattern on a basket or other non-claimed article. The PTO had attempted to distinguish that case as applying to the particular situation where the drawings do not actually show the claimed article of manufacture. In particular, the court held we “that claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.” The drawing in Curver was an abstraction showing only the wicker design, and so the claim was important to tie the design to a particular article of manufacture.
The terse Surgisil decision did not attempt to explain why this case extends beyond the language of Curver.
For many years, the USPTO has followed the same policy — the claimed article does not make any difference for anticipation purposes. That rules stems from an old CCPA case known as In re Glavas, 230 F.2d 447, (CCPA 1956).
It is true that the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is. Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no question as to nonanalogous art in design cases.
Id. One problem with Glavas is that it was an obviousness case and so the statement above is dicta. The court previously recognized this dicta in Curver. The court also suggested that Glavas had been implicitly overruled by Egyptian Goddess. In Egyptian Goddess, the en banc court held that the ordinary observer test applies to anticipation analysis. In that regard, an ordinary observer would not be likely to confuse a sharpened pencil with a lip insert. (Note, this last sentence is implied by the court in Curver, but not expressly stated).
Surgisil is in some tension with precedent holding that the claim scope should be limited only to ornamental features. See, e.g., In re Zahn, 617 F.2d 261 (CCPA 1980) (“[35 U.S.C] 171 refers, not to the design of an article, but to the design for an article.”); OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) (design patent scope is limited to the ornamental features). The appellate panel here did not address that argument presented by the USPTO on appeal.
Generally, the USPTO will see this case as a major change to anticipation analysis. In the end, it will make it even easier to obtain design patents — and seemingly permits someone to obtain a design patent by grabbing a design that is known in the art and applying it to a new article of manufacture.
