OPEN HOUSE: REPORT ON DESIGN PATENT TOPICS
PREPARED BY WILLIAM T. FRYER, III
Introduction. The Patent and Trademark Office (PTO) held an Open House on July 29, 1998, at the Crystal Forum, Crystal City, VA. After a brief introduction of the overall program, this report will address only the Open House design patent topics.
The recent Patent and Trademark Office (PTO) reorganization, based on Technology Centers, was the motivation for this Open House. Technology Center 1600/2900 is composed of biotechnology, organic chemistry, pharmaceutical and Design Work Groups, organized under three directors. John Kittle remains in charge of Design Group and is one of the Technology Center directors with responsibility for a technology area and some administrative sections of the Center.
The Centers were created to integrate many administrative functions, like fee processing and classification, for more effective processing. The Design Group was the leader in testing the integration of administrative functions into the examination operation, and the experience was successful, generally.
The main purpose of the Open House was to give the PTO administration an opportunity to present their plans and current performance evaluations, and receive comments from PTO customers. The program was design to include small group, informal discussions with PTO staff. It was an excellent start in accomplishing these goals.
The general presentations integrated design patent topics, indicating a strong commitment to improve examination of all types of patents. The reference in the Open House title to Technology Center 1600/2900 recognized the importance of inventing novel product appearances to complement improvements in utility, as a major component of product development.
Information from General Sessions Related to Design Patents (This information was taken during the presentations and some of the data was found in a handout titled "Vital Statistics, as of July 1998, while other information was not verified)
John Kittle, Work Group 2900 (Designs), Technology Center Director E-mail firstname.lastname@example.org; Tel. 703-308-0193; Fax 703-308-8494 Other Group 2900 fax numbers -703-308-2742 and 703-305-1935
STAFFING : Group 2910  - Art Units and Examiners
Art Units - 4
Examiners - 53
Ph.D - 0, MS - 4, Law Sch - 0, JD - 4, FSA - 37, PSA - 9
(FSA= full signatory authority; PSA= partial signatory authority)
Supervisory Primary Examiners - 4
Ph.D. - 0, Law MS - 0, Law Sch - 0, JD -1, FSA - 4, PSA - 0
Technical Support Staff
Tm. Ldr. - 2; LIE - 4 ; LDRC - 8 ; Typists - 1; Recep. - 1; Total Technical Support Staff - 16
(Tm. Ldr. = Team Leader; LIE = Legal Instruments Examiner; LDRC = Legal Documents Research Cleck)
Level of Examiner Hiring and Attritions
FY95 Hired 4 and Attrition 0
FY96 Hired 1 and Attrition 1
FY97 Hired 0 and Attrition 4
FY98 Plan to hire 4 and Attition 0
Estimated New Case Filings (Presented in tabular form from graphical chart in handout)
FY New Case Filings
FY 94 First Action. 16980; Allowances 12279; Examiner's Ans. 82; Diposals 17365; Total Actions 26892
FY 95 First Action. 18441; Allowances 13004; Examiner's Ans. 132; Diposals 16391; Total Actions 29632
FY 96 First Action. 15603; Allowances 13580; Examiner's Ans. 53; Diposals 17088; Total Actions 25729
FY 97 First Action. 15059; Allowances 12773; Examiner's Ans. 48; Diposals 16073; Total Actions 24799
FY95 Total Pendency 18.8; Pendency to first action 9.5; Percent Applications Allowed 75
FY96 Total Pendency 17.6; Pendency to first action 8.1; Percent Applications Allowed 80
FY957 Total Pendency 20.0; Pendency to first action 7.8; Percent Applications Allowed 84
FY98 Total Pendency 17.1; Pendency to first action 8.3; Percent Applications Allowed 85
Current Inventory of Pending Applications - TC 2900
New Applications 8880 (New Docketed cases 8316 - cases assigned to examiners)
Amended Applications 177
Rejected Applications 4916
Design Application Experiment "Rocket Docket"
Average pendency to FAOM 45 days
Average pendency to allowance 2 months
Pendency to issue 4 months
Fastest patent 60 days (D380,417)
NEW EXAMINERS: It is expected that four new Design Group examiners will be hired this year (see chart above).
FILING RECEIPT PROCESSING AND OBTAINING CERTIFIED COPY OF APPLICATIONS: The processing of filing receipts takes an average of 30 days now. The quality of information on the receipts is a problem, and this matter is being addressed. [Editor's Comment: Owners of design patent applications have a narrow window of 6 months from U.S. filing date to file a corresponding foreign application under the Paris Convention. The U.S. filing receipt is the License to File required to initiate foreign filing. Certified copies of the U.S. application are required promptly in some countries. The PTO needs to address the unique situation faced by design owners who want to foreign file. Separate goals for design application filing receipt and certified copy request processing may be needed.]
POST EXAMINATION PROCESSING: The long time after payment of the issue fee to issuance of a design patent is a major factor in design patent pendency. This interval is now an average of 14 weeks for all types of patents. The problem is being addressed and the PTO goal is to reduce the time to 4 weeks.
FIRST OFFICE ACTIONS: In Group 2900 a design patent application First Office Action is issued on the average in 8.3 months (see above chart). The goal is an average of 6 months to provide a First Office Action.
OVERALL PENDENCY: In Group 2900 the average pendency, filing date to issuance, is 17.1 months (see above chart). The PTO goal for design patent applications is an average of 15 months. [Editor's Comments: The Design Group's performance in reducing pendency has been very good.]
Design Group 2900 Report from Open House Brochure (page 6).
John Kittle, Director He received his B.S. and M.S. degrees in Chemical Engineering from Northeastern University in 1970 and 1972 respectively. In 1973 he left E. I. Dupont and DeNemours & Co, to begin his career at the PTO. In 1988 he was appointed as the first Director of Group 1800. Since that time he has served as Group Director in Groups 1500, 3400, 1100, 1200 and his present assignment in 1610 and 2910.
Art Unit 2911 (Old Art Unit 2901) Alan Douglas, Supervisory Patent Examiner He graduated from the University of Miami with a BA in electronic communications. He left Temple University Law School after a year of study. He has been an SPE for 6 years. Recent patents issued in art unit 2911 include the Snake Light flashlight which has been successfully prosecuted in court, and several computer display screen icons.
Room CM1-4D01, Tel. 703-305-3255
As of June 9, 1998, Art Unit 2911 has 2125 unexamined applications with 12 Primary Examiners and 3 Assistant Examiners.
Art Unit 2912 (Old Art Unit 2902) Ted Shooman, Supervisory Patent Examiner He has 3 years undergraduate work in architecture at Virginia Tech and holds a BS in Construction Technology from Bradley University. He was an examiner for 11 years and has been SPE of art unit 2912 for 3 years.
Room CM1-5B01, Tel. 703-305-3255
As of June 9, 1998, Art Unit 2912 has 1709 unexamined applications with 12 Primary Examiners and 3 Assistant Examiners.
Art Unit 2913 (Old Art Unit 2903) James Gandy, Supervisory Patent Examiner `He is a graduate of Temple University with a bachelors degree in Architectural Design. As an examiner for over 23 years he worked primarily on design patent applications in the field of land transportation. He has been an SPE in Design Group 2900 for 2 years.
Room CM1-5D01, Tel. 703-305-3264
As of June 9, 1998, Art Unit 2913 has 1622 unexamined applications with 9 Primary Examiners and 4 Assistant Examiners.
Art Unit 2914 (Old Art Unit 2904) Louis S. Zarfas, Supervisory Patent Examiner He holds a BS from the school of Architecture at MIT and a JD from National Law Center at GWU. He has been an SPE for 3 years. Art Unit 2914 has issued many key patents in the footwear area on items such as athletic shoes, hiking and ski boots.
Room CM1-4B01, Tel. 703-305-3269
As of June 9, 1998, Art Unity 2914 has 1392 unexamined applications with 7 Primary Examiners and 4 Assistant Examiners.
Group 2900 Presentations on Design Patent Law and Practice
The Director and staff presented short reviews of recent case law developments and reevaluations of prior law and procedures.
RECENT CASE. In re Daniels, 46 USPQ (BNA) 2d 1788 (Fed Cir. 1998) was the only recent case discussed. Its holding is being implemented, to permit priority in a continuation application for an independent and distinct design shown in combination with product shape in a parent application The decision and the Fryer Amicus Curiae brief are found on this web site. The practice for claiming priority in a continuation application for an independent and distinct design shown in the parent application will follow the general procedures used for all patents. Preliminary comments on what practice will be followed included statements that: (1) color can be removed from the parent disclosure to claim only the other product features in a continuation application, (2) company logos can be removed in the continuation application, (3) part of a complex shape cannot be claimed separately in a continuation application, and (4) if surface design is so expansive it cannot be separately claimed in a continuation application..
CLAIM: A very significant reaffirmation was that claim scope changes can be made using solid or broken lines on existing disclosure. [Editor's Comments: This procedure gives design practitioners significant flexibility in claiming appropriate design protection during the prosecution stage.]
EXPEDITING PROSECUTION: A "rocket docket", walk through processing will be set up for design patent applications (see above statistics). There will be a substantial supplemental fee for this service.
PETITIONS FOR USE OF PHOTOS: There was discussion that the petitions for use of photos could be eliminated, now that practitioners and the PTO have substantial experience in using photos.
PATENT APPLICATION TITLES: Considerable sensitivity was expressed by practitioners to a requirement for too narrow a design application title. The impact on infringement scope and prior art scope were identified as important considerations on title selection.
DRAWING QUALITY: A very comprehensive review was given of drawing quality and techniques for avoiding problems. Drawing features that have contours, recesses, holes, for example, need appropriate shading. New matter rejections may occur if shaping is added after filing.
PHOTO - RULE AGAINST CHANGING DESIGN CLAIM: When a photo is used as the formal disclosure, the current PTO rule will not allow any change in the photo. There was some discussion of whether new technology, using digital techniques to prepare a photo, may make this rule too limited. [Editor's Comments: For example, a digital photo can be retouched to change a solid line to a broken lines, changing claim scope..]
RESTRICTION PRACTICE: The PTO continues to examine closely applications with multiple embodiments for possible restriction. In re Rubenfield, 270 F. 2d 391, 123 USPQ (BNA) 210 (CCPA 1959) was mentioned as the leading case relied on by the PTO. The main question is whether the additional features in a second embodiment create a design that is patentable distinct from the primary embodiment. If the additional design is not patentably distinct, it can be included in application with the main embodiment. [Editor's Comments: In considering placing more than one embodiment in a design patent, an important question is how the added embodiments will effect interpretation of infringement scope. It would seem that carefully prepared alternative embodiments could help clarify the broader scope of the generic invention.]
ORNAMENTAL: The Design Group has reviewed the legislative history and case law concerning the requirement for ornamental, under 35 U.S.C. § 171. A primary case on which the PTO relies is In re Carletti, 328 F. 2d 1020, 140 USPQ (BNA) 653 (CCPA 1964). Another case mentioned was Blisscraft of Hollywood v. United Plastic Company et al, 127 USPQ (BNA) 452 (D.C. S.NY 1996), a decision before the Federal Circuit establishment. The Design Group will use several strategies to place the burden on applicants, in appropriate cases, to show what is ornamental in the disclosed design. One approach is to require identification of what features are ornamental. Another strategy will be to determine the intent of the designer in creating the article. [Editor's Comments: This practice, if followed widely, could result in issuance delay and, most important, create considerable problem for applicants providing the requested information, to avoid serious questions in interpretation and litigation of these design patents. These procedures need to be studied to see if they are consistent with existing law and their impact on obtaining proper scope of design patent protection.]
ORIGINAL: The Design Group presented a broad interpretation of originality under 35 U.S.C. § 171, to included standards that raise issues of novelty, beyond the requirement of 35 U.S.C. § 102. This approach needs to be studied to see if it is consistent with existing law.
HIDDEN IN USE: The Design Group has reviewed its practice in determining whether a product appearance can be protected for articles of manufacture that are hidden in use during at least part of their life. A test will be used of whether the article appearance is a matter of consumer concern during its visible commercial life. [Editor's Comments: The decision of In re Webb, 916 F. 2d 1553, 16 USPQ 2d (BNA) 1433, Fed. Cir. 1990), is the most pertinent, recent case on this point. This case emphasized the analysis whether the design was significance to consumers at some stage of the product life, forming a basis for protection. (Editor's Comments: It will be important for design owners to evaluate whether their products face this protection exclusion test. Another important step is to evaluate the extent to which this exclusion is applied by the PTO, e. g., whether it uses a low threshold test excluding products hidden from customers during normal operating use, or a test that recognizes the role of appearance in the marketing as well as in the operating use of a product. It would appear that the latter approach is the one envisioned by the Federal Circuit in the Webb decision.
RECENT PTO PUBLICATION ON DESIGN PATENT PROSECUTION PRACTICE: A revise edition of the PTO publication "A guide to filing a Design Patent Application" has been published. A link to this publication on the PTO web site can be found on this web site under the home page title "Special Interest Web Sites". It can be found on the PTO web site at: http://www.uspto.gov/web/offices/pac/design, and it is listed in the Special Interest links on the Fryer web site.
DESIGN GROUP OPEN HOUSE PUBLICATION: The presentations by several of the Design Group staff utilized illustrative figures found in a handout publication, dated July 29, 1998. The examples in this publication were very helpful in explaining the points made by the presenters. [Editor's Comments: The staff excellent presentations and the opportunity to discuss the topics informally with the PTO staff were very valuable parts of the program, suggesting that this format should be continued and that more design patent practitioners should take advantage of the next Open House to become up to date.]
END OF REPORT
Copyright © 1998, W. T. Fryer, III
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