Category: Industrial Designs

A member of the industrial designs listserv asked:

In general can a Registered Community Design be cited as prior art to counter a claim of design patent infringement of an issued US design patent in the US?  Do you know of a case that says that?

Here’s what I think.  And I hope that readers will offer their own comments.

Continue reading “Using an RCD to try to defeat a US design patent?”

A member of one of the listservs asked these questions:

A design was disclosed in May 2014, with a registration granted December 2014 in The European Community based on an application filed towards the end of October 2014 (within the last six months).

 Is it still possible to file a design application in the US?  Does the statutory bar for design patents run one year or six months from initial disclosure?  Can a US design application still be filed within six months of priority, even though the priority application has already been registered?

The questions remind us that Article 4 of the Paris Convention sets a twelve-month period for filing a second patent application that was intended to claim priority from a first patent application, but that the twelve-month period applies only to utility patents, not (US) design patents.  For design filings, Article 4 sets a six-month period.  When we do the mental gear change from utility to design, there is the number “six” that pops up in our heads as well as the notion that the number “twelve” no longer applies.

The questions remind us that before the America Invents Act (AIA) happened, there was a twelve-month grace period.  You could disclose your invention 11 months ago, and file your US patent application, and it was no problem.  Indeed a third party could independently invent the same invention 11 months ago, and disclose it 11 months ago, and still even that disclosure did not have to be a problem.  You would merely “swear behind” the activity of the third party and the problem would go away.  By this we mean establishing that your date of invention predated the third-party disclosure that happened 11 months ago.

So the listserv member may have been wondering, does the “twelve becomes six” change from utility to design (in Article 4 of the Paris Convention) make a difference in this fact pattern?  But probably the main thing troubling the listserv member was the AIA itself, which sort of eliminated the twelve-month grace period and sort of did not eliminate it.

Still another thing that the listserv member may have been thinking about is (pre-AIA) 35 USC § 102(d) that says that if a foreign filing resulted in a foreign patent issuing before the US filing date, then under certain circumstances the US filing is statutorily barred.  Here we have a granted design registration in OHIM that would be chronologically prior to the proposed US design patent filing date.  Is it a statutory bar?

If you’d like to test yourself, work out what you think the answer is, and then read on.

Continue reading “Can a US design application still be filed?”

Today was Design Day 2015 at the USPTO.  From humble beginnings many years ago, Design Day has grown to an enormous all-day event, filling both halves of the USPTO auditorium and overflowing to computer screens in streamed offsite locations.

The in-person attendees numbered some 320, of which about one hundred were examiners in Technology Center 2900 (examiners who examine design patent applications).

These days of course at any design patent event, one faces the spectacle of the many, many patent practitioners who used to pooh-pooh design patents as a waste of time and who now will proclaim (with no apparent embarrassment) to anyone who will listen how much design expertise they say they have accumulated over the years.  As I mingled with the attendees during the break times in this all-day meeting, I was reminded that there are a small handful of practitioners (Perry Saidman comes to mind, but there are others) who were voices in the wilderness, years ago, getting design patents for clients long before it was trendy and fashionable to do so.

It was nice to have an opportunity to chat with the design patent examiners, and to learn a bit about what their daily work is like.

Recall that recently, as part of dissolving the “ghost art unit”, the USPTO created a new art unit 2919 headed by an Eric Goodman.  Now for the first time, this new art unit 2919 has a publicly stated First Office Action Prediction.  Cases in art unit 2919 that were filed two months ago have an FOAP of 18 months.

This compares favorably with art unit 2913 which has FOAPs in the range of 32 months.

We try to track the First Office Action Predictions for many of our pending patent applications for one reason or another.  By now there is a very clear trend of FOAPs for newly filed US design patent applications.  It suggests that there is quite a backlog of unexamined US design patent applications.

Continue reading “The latest US design patent examination backlog …”