Thursday, October 18, 2012

Foreshadowing - The Prosecution History of the First Generation iPad Design Patent

The big news this week is the design patent granted to Apple on its first generation iPad design (U.S. Design Pat. No. D669,069). The application for this design was filed on January 26, 2010, nearly three years ago. Unlike the design patent asserted against Samsung, this design patent features aspects of the first generation iPad design that include the home button, the docking port, the volume and mute buttons.

Looking at the prosecution history, Apple received its first notice of allowance for this patent in March of 2011. So why did it take so long to get this patent granted? Because Apple filed six separate Continued Prosecution Application requests, each time submitting a new Information Disclosure Statement (IDS). Did Apple intentionally delay the patent issuing? It is possible that Apple is gearing up to assert the patent and is making sure all the references are considered by the PTO. The list of references is quite extensive and includes exhibits from the Apple v. Samsung case.

Another interesting point to note in the prosecution history is the obviousness-type double patenting rejection received during prosecution. The doctrine of obviousness-type double patenting bars applicants from obtaining a second patent on an invention that is deemed to be an obvious variation of a claimed invention. The rejection was received over the co-pending application 29/353,311 in view of US Patent No. D602,017 and D451,505. The 29/353,311 application (now patent D637,596) discloses a more generic iPad design.

D602,017 discloses an iPhone design and D451,505 is directed to a portable computer made by Hitachi. In response to the rejection, Apple amended the drawings to the version that includes the contrasting shading on the screen seen above. All of these co-pending design applications on the iPad design could result in thin patent rights in each individual application, but the combination of these applications could provide Apple with a formidable weapon against against other tablet PC manufacturers.

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