First of the 2016 Tote Boards posted

The 2016 Design Patent Toteboard has been posted.

The response periods for the 2016 Utility Patent and 2016 Trademark toteboards is being extended from January 20 to January 23.

Several well-known firms that do trademark prosecution have not yet responded.  If you know someone at one of these firms, you might want to pass along a reminder to them.  These include:

  • K&L Gates
  • Leydig Voit
  • Banner & Witcoff
  • Head, Johnson & Kachigian
  • Antionette M Tease PLLC
  • Andrus Intellectual Property Law
  • Lee & Hayes PLLC
  • Chernoff Vilhauer LLP
  • Dorsey & Whitney
  • Alston & Bird LLP
  • Arent Fox LLP
  • Baker Botts L.L.P.
  • Fross Zelnick

Get your numbers in for the 2016 design patent toteboard

A year ago I published the 2015 Design Patent Toteboard.  Now it’s time to finalize and publish the 2016 Design Patent Toteboard.

The goal of this toteboard is to list the firms that helped clients to obtain US design patents in 2016.  It will rank the firms according to the number of US design patents obtained.  Respondents are asked to report only US design patents for which the firm is listed on the front page of the granted patent.  Please respond by January 15, 2017.

To respond, click here.

Cambodia joins the Hague Agreement

Cambodia deposited its instrument of accession to the Hague Agreement on November 25, 2016.  This event brings the number of Hague Agreement members to 66.

Cambodia now belongs to all three of the filing mechanisms — Madrid Protocol (as of June 5, 3015), PCT (as of December 8, 2016), and the Hague Agreement (as of February 25, 2017).

The two-letter code for Cambodia is KH.

Who was quickest to report the Supreme Court design patent decision?

Old-timers like me will recall the old days when, to keep up to date about important developments like court decisions, the only choice was to subscribe to BNA’s PTCJ (Patent Trademark and Copyright Journal), a weekly print publication that at that time cost about $1000 per year.  The average delay between an important event and a subscriber’s learning of the event was on the order of 7-10 days.

Nowadays of course we get our news via the Internet.  But it is interesting to see the great variation in how long it takes for news of an important event to get around depending upon the particular distribution channel.

I’ll take as an example yesterday’s important Supreme Court decision in Samsung v. Apple.  This is the first time in decades that the Supreme Court has taken up a design patent case, and the outcome is an important one for the world of design patents.  (I blogged about the decision yesterday.)

The first place that this event got reported was the mailing list of the AIPLA Industrial Designs committee, at 9:34 AM Mountain Time.  The poster was James Aquilina, vice-chair of that committee, and the result was that all of the members of that AIPLA committee learned of this development within minutes of the Supreme Court’s release of the decision.

The second place that this event got reported was the Industrial Designs listserv, at 10:46 AM Mountain Time.  The poster was alert listserv member Margaret Polson, and the result was all of the members of that listserv learned of this development.  (If you have not already done so, you should join the Industrial Designs listserv, which is free of charge.)

The third place that this event got reported was the Patentpractice listserv (sponsored by Washburn University School of Law), at 11:11 AM Mountain Time.  The poster was alert listserv member Rick Neifeld, and the result was that all of the members of that listserv learned of this development.

James, Margaret and Rick were each filing US design patent applications for clients long before it was fashionable to do so.  They scooped every mainstream publication including the New York Times and USA Today (mentioned below).

The fourth place that this event got reported was the email newsletter of the firm of McDonnell Boehnen Hulbert & Berghoff LLP (“MBHB Snippets“).  This was at 1:56 PM Mountain Time.

The fifth place that this got reported was the Ant-Like Persistence blog, in its industrial designs section, at 4:29 PM Mountain TIme.   (If you’ve not already subscribed to that blog, now is the time to do so.)

The sixth place that this got reported was the email newsletter of the firm of Maier & Maier PLLC.  This was at 4:53 PM Mountain Time.

By that point the news had reached the mainstream media, with articles in the New York Times, USA Today and elsewhere.

US Supreme Court decides a design patent case

It’s not so very often that the US Supreme Court gets an opportunity to decide a case about a US design patent.  Some months ago the Court granted certiorari as to one of the sub-issues in the smartphone litigation by Apple against SamsungToday the Court decided this sub-issue.  The decision, which I discuss below, comes nowhere near to bringing an end to that litigation.  Perhaps more importantly for the world of design patents, the decision has ramifications for design patent law generally.

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Midnight at WIPO returns to normal

A week ago I blogged that filers filing things at WIPO would have an extra hour to get a same-day filing date.  As of a week ago, you could file as late as 5 PM Mountain Time and still get a same-day filing date.

Now today things return to normal.  To get a same-day filing date at WIPO, you will need to file by 4 PM.dst

New leadership for AIPLA Industrial Designs Committee

Richard Stockton

Richard Stockton

It’s October, which means it’s time for the AIPLA annual meeting.

And it’s at the AIPLA annual meeting that AIPLA committees get new leadership.  Each committee position (chair, vice-chair) normally has a term of two years.  So in a particular October a two-year term might be half way through or might be beginning.  About half of AIPLA’s committees thus change leadership in a particular October.

This year is the year for the Industrial Designs Committee to change leadership.  The news is that the new chair of the Industrial Designs Committee is Richard Stockton of Banner & Witcoff, and the new vice-chair is James Aquilina of Design IP.

James Aquilina

James Aquilina

Richard and James are each very active in the world of design patents, having filed and prosecuted many design patent applications.  Richard’s firm, Banner & Witcoff, has ranked in first place in the 2012 US Design Patent Toteboard, the 2013 US Design Patent Toteboard, the 2014 US Design Patent Toteboard, and the 2015 US Design Patent Toteboard.

This coming two years will be an important time for industrial designs.  New countries, including China, are likely to join the Hague Agreement.  Important court cases, including a Supreme Court case in Apple v. Samsung, are likely to be decided.  It will be good to have Richard’s and James’s leadership.

For the next week, an extra hour available for WIPO filings

dstExperienced filers in the Patent Cooperation Treaty, Madrid Protocol, and Hague Agreement systems (utility patents, trademarks, and industrial designs) know that it is important to keep always in mind when midnight will arrive in Geneva, where WIPO is located.

For a PCT filer, this matters because to get a same-day filing date, a PCT application being filed in RO/IB will need to be filed by 4 PM Mountain Time.  The same is true for filing an Article 19 amendment.  The same is true if you are using ePCT to file a Demand and Article 34 amendment.

For a Madrid filer, this matters among other things for the payment of decade renewal fees.

For a Hague filer, this matters for the the filing of an international design application at the IB.

The point of today’s post is that starting today, and for the next week, you get an extra hour to get a same-day filing date.  The reason is that Europe and the US carry out their daylight saving time transitions on different days that are a week apart.

This means that you could file as late as 5 PM Mountain Time (instead of the usual 4 PM) and still get a same-day filing date.

Things will return to normal a week from now, on November 6, 2016.