William T. Fryer III,
University of Baltimore School of Law
Baltimore, Maryland, U.S.A.
On this article contact via E-mail at: firstname.lastname@example.org
TABLE OF CONTENTS
B. AIA Design Patent Law Changes
1. Prior Art
3. Best Mode
4. Design Patent Effective Date
5. Grace Period
6. Hague Agreement Design Treaty
7. Design Patent Validity Determination
8. Supplemental Examination
9. Prior User right
Everyone will benefit from a full discussion of the AIA impact on design patent law and practice. Comments and questions on this topic are welcomed. An effort will be made to post on the fryer.com web these communications, where feasible.
Dramatic changes have occurred in U. S. design patent law and practice due to the America Invents Act (AIA), enacted on September 16, 2012, Patent Reform Act of 2011, H. R. 1249 (112th Cong., 1st Sess.), Public Law No: 112-29). A copy of this legislation should be close on each patent attorney's desk. It is available on the Thomas Library of Congress web site at URL http://thomas.loc.gov/home/thomas.php. This new law changes some of the core features of design patent law on novelty standards, strategy during patent examination before grant, and when infringement litigation may occur. For foreign patent attorneys, they will find the changes very close to their national law and practice. It is the U. S. attorney that will have to make the big adjustment and go back to school to learn the new U. S. patent law and reconsider their patent strategies.
As an example, due to the AIA a defendant will have the option of a design patent reviewed on most issues by the U.S. Patent and Trademark Office (PTO), and the review will be completed in no more than18 months, and usually in 12 months. This illustration reveals one of the main goals of the patent law revision was to reduce patent litigation cost and the time to complete litigation. Another goal was to harmonize significantly U. S. patent law with the utility patent laws in most countries. A third purpose of the change was to achieve more efficient operation of the PTO and reduce the PTO backlog of unexamined utility patent applications. PTO design applications were being examined promptly and there was no large backlog of unexamined design applications. All AIA patent reform changes were considered necessary to improve the U. S. economy.
It was inevitable that changes primarily concerned with improving utility patent law would effect design patents. U. S. design patent law has been the same as U. S. utility patent law on some fundamental features, leaving the courts to determine how to apply the law to the different types of patents. Changing design patent law independently by statutory revision has not been an easy step.
The U. S. patent statute states that "the title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.", 35 U.S.C. § 171, paragraph 2. In practical terms, design and utility patents have separate advocates and roles to play. History has shown that utility patents are the giants of this group, with the controlling economic and political power. At the same time, history has taught that design patent protection for the look of a product is a significant complement to technology utility patent protection. The major effort around the world to stop product counterfeiting and to market products that have the most attractive product appearance and usefulness are strong evidence of this product protection partnership. Products created by industrial designers are celebrated around the world, as illustrated in the international design society web sites, such as IDSA in the U. S., at URL http://www.idsa.org.
Some AIA changes made in the U. S. patent law for utility patent owners did not have the same importance for design owners. For example, there was no global harmonization agreement for design patents for most of the AIA changes, except for the first-to-file right. Alas, U. S. design patent law has been changed, and the rest of this article guides the reader through many of the changes and points out some issues that could have been resolved other ways. In the future the AIA experience should teach design owners, their attorneys, professors and others that it is important to get involved in the debate over patent law changes.
B. AIA DESIGN PATENT LAW CHANGES
The following topics summaries deserve much longer analysis than this article can provide. The issues created by these changes will be the subject of many conferences. Hopefully, this outline will be a useful source to guide these discussions. The new statutory provisions can be found on the Thomas Library of Congress web site, and they will not be repeated in detail here. The gist of the change and impact will be given.
1. PRIOR ART. The U. S. design patent law has a global new prior art standard in 35 U .S. C § 102(a). In essence, it is a race to file at the PTO or make a design invention public. A person who makes a publicly available design disclosure will prevent another person from patenting that design after the first party publication, usually. An exception is when derivation from the original designer can be proved. If a design patent application claimed design is found in a public source, originating before the application filing date and not the work of the application owner, the design will be not be patented, usually. The practice effect of this prior art law change on some businesses, for example, such as fashion design, is an impossible rush to the PTO to file a design patent application. This new situation suggests that the current European Union design protection, and pending U. S. fashion design legislation, protecting unregistered design against copying are very useful approaches. The unregistered design fills a gap that softens the blow of the AIA new prior art standard. Many countries have recognized this fact and enacted similar laws.
Every effort should be made to debate the pros and cons of why design global novelty is a good thing for the U. S economy. The European Union had decided for designs to follow a broad national standard of novelty (arts. 5 and 7, Community Design Regulations at URL HTTP//oami.europa.eu). To prevent protection in the European Union designs must be known in that community. Of course it would have been easy in the U. S. to have a special standard for design patent novelty, such as in the European Union. Another example where debate on a harmonization issue occurred was the rejection of design application patent publication, while publication of utility patent application was supported at a PTO hearing, 35 U. S.§ 35 U. S. § 122 (b)(2)(A)(iv). The lesson is that an open discussion with design interest groups , both in the U. S. Patent Trademark Office and in Congress is an important step when a utility patent law change is proposed
The U. S. economy should have the best design patent protection system. In view of the likely difficulty in finding global prior art evidence, or verifying truthfulness of foreign evidence on design inventions, it would appear that a national availability standard would best fit the design owner's need for a lower cost protection system, following the lead of the European Union. What novelty standard to use for designs is not an easy decision, and the strong position of the utility patent group makes it difficult to convenience legislators the design patent needs its own approach sometimes. The AIA experience and and earlier similar events should teach design patent owners how to be fully involved in patent law changes that may affect design patent law.
2. FIRST TO FILE. The world has now harmonized to a first-to-file design patent standard. A patent goes to the first person to file a design patent application, with safeguards against someone stealing the information from the originator (AIA new §102(b)(2) and § 291). The practical impact of this change on the design owner depends on the product. There will be a review of how soon a design is ready for filing, so the marketed design is protected. The golden rule is file promptly, so the attorney will have to be closely involved in the product production schedule. The derivation issue, another person stealing a design and filing first, becomes very critical. Good record keeping on who has access to design development information and tight security will be essential. The filed design patent application is not the only record needed to protect a design.
3. BEST MODE. Before AIA the preferred product (Best Mode) from a marketing point of view had to be disclosre in a design patent application. AIA attempted to remove the Best Mode standard from U. S. patent law, but some thoughtful attorneys have doubts whether the Best Mode standard is gone. They recommended this step be followed even after AIA enactment. This topic was discussed at a recent American Bar Association, Section of Intellectual Property Law conference, March 29, 2012, (Panel on AIA). An excellent AIA review paper was prepared by this panel and it is likely to be published soon (see List of Sources below). Certainly for designs, the best chance for an infringement holding is by having the filed design application disclose the marketed product.
4. DESIGN PATENT EFFECTIVE FILING DATE. A design patent application has to have a claim for a design to receive an effective filing date,and the date that claim appeared in the applicaiton is its effective filing date, AIA new § 102(d). AIA makes this change in U. S. law perfectly clear. Disclosure in a patent application description to determine the prior art effective date of a design was the law before AIA, with some law developed against late claiming in special situations.
It is an even harder problem for design patent application practitioners to adapt to AIA effective filing date law. It was a common practice to make changes to the claimed design of the filed design drawing to adjust the claim scope, after the design patent application was filed. Drawing solid lines defines the claimed design in the application. Replacing solid lines with broken lines, if appropriate, may change the drawing scope and the effective date for the claimed design, since AIA makes the date when a claim appears in the application, not the disclosure, the basis for determining the effective date and when there is prior art . A drawing change by altering the solid or broken lines may open up more prior art for consideration and might might render the design patent claim invalid
The practice of design patent application claim changing after a design application is filed will have to be reviewed by attorneys, with the aforementioned caution. If the filed application has the current marketed design claimed (shown in solid lines), this step will eliminate the issue, suggesting that this approach should be standard operation procedure. The practice of filing additional design embodiments when the application is filed will be another way to address various situations raised by the prior art without changing the claim (drawing) filing date and bringing in more prior art.
Design patent drawing amendment using broken and solid lines are valuable tools for adjusting the scope of design patent and utility patents without increasing prior art. It is a procedure that will need further refinement within the AIA revision. The new law simplifies the issues in evaluating utility patents. It probably was not very difficult to work with design patents under the earlier law. The drawing amendment adjustment allowed for design patents gave some small flexibility in claiming a design to get the best protection afforded by the prior art, in effect a modest claim amendment procedure without losing the filing date for the claimed design. Design patent examiners will have the right to approve changes in drawings (claim scope).
Fortunately multiple design applications will be protected as of the filing date for each of the filed claimed designs. Foreign applications for design proection will be treated the same as U. S. applications, as each independent and disctinct design can be separately filed as a divisional application without losing any rights.
Congress has spoken. The cooperative work of attorneys, design owners and the bar will allow the AIA filing date issue to achieve a result that supports U.S. economic growth with design patents as an effective partner.
5. GRACE PERIOD. The idea of allowing inventors to disclose publicly their inventions and after publication to file a patent has been present in U. S. law and the laws of many countries for many years. Usually a term of one year is given to prevent the inventor's publication from stopping the design patent protection.
A grace period has its complications in evaluating patent rights, as does the related issue of a design being stolen from the original designer. The AIA retains the grace period concept, but it substitutes the public disclosure date for the beginning of the one year grace time to file an application (AIA § 102(b)(1)). Clearly this change takes away a possible earlier date right that inventors had, both for utility and design patents, the possible invention date before the filing date. On the other hand the AIA changes make the patent system stronger, eliminating some complicated issues. The AIA patent examination and litigation should be quicker and cheaper for design patents
While the grace period helps the designer, it is the best practice not to rely on the grace period. Others can file first on their independently created design. The design owner should follow the golden rule of filing the design application promptly. The issue of some one improperly copying the design and filing earlier is resolved by a proceeding to determine derivation.
6. THE HAGUE AGREEMENT DESIGN TREATY. There is no conflict between AIA and the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement Design Treaty), U. S. treaty No. 109-21 (109th Cong.), transmitted Nov. 13, 2006). The Hague Agreement treaty was ratified by the U. S. Senate on December 7, 2007 (See above for Thomas Library of Commerce web site access information). It appears the U. S. will implement this treaty soon. It provides an important global system for initiating design protection, similar to the Patent Cooperation Treaty for utility patents and the Madrid Protocol for trademarks. For the most part, the treaty allows national law to set the standards for obtain a design patent.
7. DESIGN PATENT VALIDITY DETERMINATION. On the litigation side of design patents there are several ways to have a design patent validity evaluated. Litigation is expensive, and the AIA made more opportunities for the U. S. Patent and Trademark Office (PTO) to play a greater role in determining post grant patent validity. This role for Patent Offices is common around the world, and it seems to have an effective impact in resolving patent validy disputes at reasonable cost. The infringement determining part of litigation in the U. S. still can occur only in a court.
There are several new options and modifications to existing procedures for PTO validity determination. One approach completes a PTO Post Grant Review Procedure (AIA new §§ 321-329). in no more than 18 months. There are controls in the AIA to insure that the design owner is treated fairly, but both parties will have to work very quickly to follow the schedule, and the cost is substantial. The administrative cost, including attorney fees should be much lower than in litigation.
8. SUPPLEMENTAL EXAMINATION. This new procedure was set up to give a patent owner a way to remove an issue of misconduct due to failure to submit prior art for review by the PTO (AIA new § 257). The result is to give the PTO another opportunity to evaluate patent validity and the act of submitting the material should eliminate the issue when based on the submitted materials in subsequent litigation or PTO review. This procedure will be a useful option to put a design patent in better shape for litigation.
9. PRIOR USER RIGHT. A provision in AIA that does not apply to designs is the prior user right (AIA new § 273). In the earlier form of this law, certain business methods primarily related to software patents could not infringe a utility patent. The AIA changed the utility patent law, broadening the scope of inventions that have this limited right . The earlier utility patent dispute setting of the AIA law of was clear, and it was apparent that design patents did not play a role in the dispute. This careful and correct evaluation can be a precedent for subsequent evaluations of whether patent law changes should apply to both design and utility patents.
C. CONCLUSIONS. A major change in patent law and the PTO's role has occurred in the U. S. due to the AIA enactment. U.S. utility patent law is now more closely harmonized with the laws of other countries. Because U. S. design patents and utility patents share many statutory provisions, there has always be a need to evalute how this common patent law would be interpreted for each type of patent. This fact of life will not change.
Motivation for the AIA global patent law harmonization was primarily to address issues affecting utility patents. Still, there was a need to make the the U. S. patent system work more effectively, and allow the PTO to operated efficiently, handling its diverse roles. Many AIA changes serve these purposes for utility and design patents.
AIA does give us insight on the need to evaluate each type of patent to determine if a common approach is the best way to accomplish its economic purpose. The AIA legislative experience is an example of why legislative proposals need more comprehensive debate on the relation between utility patents and design patents. Each interest group should be given an opportunity to present their views. The giant utility patent companies should not dominate the statutory revision. Where there is a reasoned basis for a separate approach for design patents in the law, a separate design patent law should be followed, especially where there is useful data from other countries on how their systems with a separate design patent approach have performed. The AIA prior user right solution followed a reasonable evaluation.
There are several notices and a few warnings that have been announced in this review, for design owners and attorneys in evaluating AIA. New features are available to reduce the cost and speed up design patent validity determination. The drafting and amendment of design patents takes on new importance in searching for and evaluating possible prior art. Claiming the most effective design in relation to the prior art at the time of filing a patent application, is a step that suggests close cooperation between attorney and design owners.
In the near future greater opportunity will be available for global design protection using the Hague Agreement. This step will give the U. S. an opportunity to work on further harmonization of design patent law. The cooperation of attorneys, design owners and the PTO will lead to improvements in global design protection through this increased international interaction.
AIA is a dramatic change in U. S. patent law for utility patents and design patents. It creates what is fundamentally a new global platform for U. S. patent law. It is important to allow design protection to develop in a way so it can most effectively accomplish it needed economic benefits. The PTO should be a very active participant in this debate and encourage all interested parties to participate
Robert A. Armitage, Understanding the America Invents Act and Its Implications for Patenting, 40 AIPLA Law Quarterly 1 (2012) (Available on the AIPLA Learning Center web site for members).
Hung H. Bui, An overview of Patent Reform Act of 2011-Navigating the Leahy-Smith America Invents Act Including Effective Dates for Patent Reform, 93 J. Patent. & Trademark Off. Soc'y 441 (2011);
Andrei Iancu and Ben Haber, Post-Issuance Proceedings in the American Invents Act, 93. J Patent. & Trademark Off. Soc'y 476 (2011);
Thomas Jose Iriving, Stacy D. Lewis, Donna M. Meuth, and Macharri Vorndran-Jones, ABA-IPL 27th Annual Intellectual Property Law Conference, Understanding the America Invents Act, Feb.1, 2012 (Program held on March 29, 2012, Crystal City, VA.
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This page was first posted on April 15, 2012, and typo edits were made on November 11, 2012.
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