The recent decision in Vanguard v. Bank of America (reviewed by The Ordinary Observer – here) has highlighted the increased interest in reexamination of design patents, which has logically followed a perceived increase in the enforcement of design patents.
In a recent article, Tracy-Gene Durkin analyzed the cumulative statistics released by the USPTO, and identified reexamination trends specific to design patents. The statistics were covered a ten year period from January 1999 to December 2009.
During that period the USPTO Official Gazette noticed 5,594 requests for reexamination. Of these, 97 or 1.7% were requests for reexamination of design patents. Of the 97 reexaminations, 85 were conducted ex parte and 12 were inter partes.
The most notable statistic to come out of the review is a better than 50% cancellation rate of design patents under reexamination. Clearly, this high cancellation rate suggests a significant role for reexamination of designs, and Durkin predicts it will lead to the increased use of reexamination for design patents. The threat of reexamination given such a high cancellation rate provides significant leverage to a defendant charged with infringing a patented design. Furthermore, statements made during reexamination may provide the basis for a finding of non-infringement should the patent survive the reexamination process.
Recent decisions have arguably relaxed the necessary showing for infringement of design patents (Egyptian Goddess Inc. v. Swissa Inc. (analyzed - here), Crocs, Inc. v. International Trade Commission (analyzed - here), and International Seaway Trading Corp. v. Walgreens Corp. (analyzed - here)) suggesting that an increase in the enforcement of patented designs will follow. In such a landscape, the expectation follows that reexamination will be used more frequently as enforcement efforts increase.
Interestingly, the actual numbers fail to establish any trend showing an increase in reexamination of design patents (slide show - page 6). Further analysis of more recent numbers continues to defy expectation. Comparing the total change in the number of filings from December 31, 2009 to September 30, 2010 (ex parte 2009, 2010 & inter partes 2009, 2010)) shows only 8 ex parte and no inter partes requests for reexamination for 2010 through September 30, 2010.
In spite of the numbers failing to establish any definitive trend in the number of reexamination requests, there is no escaping the significant role that reexamination can play when considering patented designs.
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