Category: Industrial Designs

A letter got sent today to the Director of Technology Center 2900 of the USPTO (Design Patents), Karen Young.  The letter is signed by forty-eight design applicants and practitioners.  You can see the letter here and you can track it in the Postal Service here.  It should get delivered to the Director on Friday, October 15, 2021.  The letter has four “asks”:

• When an Examiner gripes in an Office Action that a figure or a detail of a figure in a design patent application is blurry or unclear, can the Examiner please state up front in the Office Action whether the Examiner took that figure from IFW or from SCORE?  This will save the applicant or practitioner from having to phone up the Examiner to ask, and if the Examiner failed to look at the SCORE drawings, this will save a step in the process.
• Just because the design Examiner can blow up a figure by 200% or 400% to find some real or imagined flaw in a vector drawing does not mean the Examiner should.  The practice of viewing figures at high magnification should only be pursued to the limited extent that it would actually make a difference in the figure as it would appear at normal scale in the actual issued patent.
• When an Examiner pastes images into an Office Action to help show what is wrong with some figure in the design application, the images have gray scale in them.  This means the images get blurred when the Office Action gets loaded into IFW.  This means the applicant or practitioner does not actually get to see the image the same way it looked when the Examiner pasted it into the Office Action.  We ask that such Office Actions be stored in SCORE, not in IFW, so that the Office Actions do not get blurred.
• The letter asks that the Issue Branch be directed always to use images from SCORE, not from IFW, when printing the issued design patent.

Here is how the letter begins:

The signers, personally or through their firms or corporations, have between them prosecuted more than twenty thousand United States design patents to issuance. The signers, personally or through their firms or corporations, have between them paid more than $26 million in fees to the United States Patent and Trademark Office in the past ten years.

It will be interesting to see what we hear back from Director Young in response to the letter.

(Update:  the letter has been sent.  See blog article.)

Hello design colleagues.  You are invited to join the signers of a letter to Karen Young, who is the Director of Technology Center 2900 (the tech center that examines design patent applications).  The letter will close for signatures at close of business today, Tuesday, October 12.  

You can see the letter here.  To sign it, click here.

The letter has four “asks”:

• When an Examiner gripes in an Office Action that a figure or a detail of a figure in a design patent application is blurry or unclear, can the Examiner please state up front in the Office Action whether the Examiner took that figure from IFW or from SCORE?  This will save the applicant or practitioner from having to phone up the Examiner to ask, and if the Examiner failed to look at the SCORE drawings, this will save a step in the process.
• Just because the design Examiner can blow up a figure by 200% or 400% to find some real or imagined flaw in a vector drawing does not mean the Examiner should.  The practice of viewing figures at high magnification should only be pursued to the limited extent that it would actually make a difference in the figure as it would appear at normal scale in the actual issued patent.
• When an Examiner pastes images into an Office Action to help show what is wrong with some figure in the design application, the images have gray scale in them.  This means the images get blurred when the Office Action gets loaded into IFW.  This means the applicant or practitioner does not actually get to see the image the same way it looked when the Examiner pasted it into the Office Action.  We ask that such Office Actions be stored in SCORE, not in IFW, so that the Office Actions do not get blurred.
• We ask that the Issue Branch be directed always to use images from SCORE, not from IFW, when printing the issued design patent.

To sign the letter, click here.  The letter will close for signatures today, Tuesday, October 12.  

(Update:  the letter has been sent.  See blog article.)

(Update:  I have prepared a letter for people to sign and you can see it here.  The letter will close for signatures on Tuesday, October 12, 2021.)

I received an Office Action the other day that reminded me that I have been meaning to make several requests to Tech Center 2900.  This is the part of the USPTO that examines design patent applications.  If your practice includes US design patent applications, I hope you will read on and post a comment or two.  Continue reading “Requests for Tech Center 2900”

(I am delighted to offer this guest post from Beijing Elite Group Intellectual Property Law Office which is a Chinese patent law firm.  Until they told me about this imminent change in Chinese design protection law, I knew nothing about the imminent change.)   US filers who are considering filing for design patent protection in China will find this article to be very interesting.

Why is June 1, 2021 important for applicants of Chinese design patents?

As you may know, there are three types of patents in China: patents of invention (similar to a utility patent in the US), utility models, and design patents. The design patent protects any new ornamental design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a product.

A first reason why June 1, 2021 is important — broken-line practice. In some design protection Offices (including the US), it is possible to use broken lines to indicate portions of the design that are not claimed. It has not, until now, been possible to use broken lines in this way in China.  For example, a bottle-neck cannot be protected solely if it cannot be separated from the rest of the bottle. Starting on June 1, 2021, it will be possible to make use of broken-line practice in China.

The availability of broken-line practice in China will be tied to the filing date of the particular design patent application. Thus, for example, if an applicant is considering filing a Chinese design patent application that claims priority from a non-Chinese design application that makes use of broken-line practice, and if the end of the six-month priority period falls on or after June 1, 2021, then the applicant might wish to consider postponing the filing of the Chinese design patent application until on or after June 1, 2021.

If a Chinese design patent application was filed before June 1, 2021 (and is thus not able to make use of broken-line practice), then it might be thought that an applicant could file a divisional application in China on or after June 1, 2021, making use of broken-line practice. We are uncertain, however, whether the new law will apply to divisional applications filed on or after June 1, 2021, tied to a parent case filed before that date.

Currently, when you have drawings in broken lines, the Chinese Patent Office will either ask you to remove the broken lines or change them into solid lines. However, the applicant cannot do it one way (for example, removing the broken lines) in the current case and file a divisional application in the other way (for example, changing the broken lines into solid lines). With this partial design protected, we do not know for sure whether the US continuation practice, for example, the parent case is all in solid lines and the continuation has some solid lines changed into broken lines to broaden the scope, is permissible.

A second reason why June 1, 2021 is important — longer patent term. Another benefit for filing the design application on or after June 1, 2021 is that the patent term is extended from 10 years from the Chinese filing date to 15 years. (The purpose of the patent term change is to help China to get ready for membership into the Hague Agreement.) This is thus a second reason to postpone the filing of a Chinese design patent application if circumstances permit the applicant to do so.

My thanks to Beijing Elite Group Intellectual Property Law Office for sharing this guest posting.