Friday, November 22, 2013

Design Patents: Modernizing an Old Property Interest (A.M. Session Live Blog)

In lieu of this week's Design Patent Roundup, we will be live blogging the discussion taking place at today's design patent conference at Suffolk University Law School.  We will be providing highlights through Facebook and Twitter, but you can find more details here on the blog.  People are just beginning to arrive for the conference, so the live blogging will commence soon.  Enjoy!

See all our notes after the jump. 

8:54 - It's a rainy day here in Boston, but that doesn't seem to have dapened the spirits of any design patent enthusiast here at the Suffolk Law School design patent conference.  Attendees and panelists are just beginning to file in for what is sure to be a fascinating day focusing on design patents.

9:16 - Professor Andrew Beckman-Rodau introduced today's conference with a quick survey about design patents.  He asks whether design patents are more akin to trademarks, utility patents,  or copyrights.  The attendees we almost evenly split between copyrights and trademarks.

9:30 - David Gerk and Brian Hanlon from the USPTO reported on design patent prosecution at the PTO.    Some statistics 35,000 design patent applications so far in 2013.  There were also 28,000 office actions, showing that the PTO is improving the rigor of its design patent prosecution.  Allowance rate is at 90%.  Mr. Hanlon confirmed that design applications may include a true written description.  The PTO also determines whether a proposed design application is "hidden in use," and therefore improper subject matter.

9:39 - Is there any difference between the "identical in all material respects" standard used by the PTO and the ordinary observer test?  [Question by Chris Carani].  Brian Hanlon is not aware of whether the PTO has recognized  any distinction between the two standards.

9:48 - The PTO will be holding a round table early next year on the question of written description requirements in design applications.  Mr. Hanlon also said that there is an untrue rumor that the PTO is no longer allowing amendments to design patent applications.  Perry Saidman is asking whether the PTO's changes on written description are tantamount to "loading a shotgun to kill a fly."  This line of discussion relates to the "slide of death," that was presented by the PTO at this year's design day.

10:02 - David Gerk from the USPTO presented on the Hague Convention and the PTO's corresponding rule-making process.  Under the Hague Convention, design patent practitioners will be able to file a singe design application with WIPO who will do an initial analysis before forwarding the application to all of the designated countries on the WIPO application.  Currently design applications must be filed in each jurisdiction separately.  The U.S. will be an indirect receiving office, meaning that WIPO design applications will be accepted at the USPTO.

10:25 - Perry Saidman is asking whether the U.S. has ever considered a registration system for designs.  David Gerk responds that under the Hague Convention there will be provisional rights for design applications.  Once WIPO publishes the application and forwards it to the designated countries, the applicant will have patent rights as of the date of the publication, provided that a design patent later issues from the application.

11:09 - Chris Carani speaks about the scope of design patents.  Mr. Caranni warns that, although the Hague Convention will allow 100+ designs in a single application, practitioners need to be careful.  The U.S. will likely restrict your designs and applicants risk creating a judicial estoppel if they do not later pursue the non-elected designs.  (citing Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC).  (Agreed and good point).

11:34 - Mr. Carani also touched on the "Matter of Concern" doctrine.  In In re Webb, 916 F.2d (Fed. Cir. 1990) the Federal Circuit affirmed the invalidity of a design patent for a hip prosthesis because the appearance of the article is not a "matter of concern" because it is concealed within the body throughout the life of the product.   This argument tends to be made in an expanding class of cases e.g. printer cartridges.  See Static Control v. Lexmark (6th Circuit interestingly).

11:53 - Mr. Carani suggest that the standards for priority ought to be the same as the standards for anticipation (and infringement for that matter).  For background on this confusing (double) legal standard see the curious case of Munchkin v. Luv n'Care. 

12:06 - Perry Saidman argues that an expired design patent should extinguish any further trade dress rights.  Court decisions to the contrary run afoul of Supreme Court precedent.  See Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938).  Does the public have an affirmative right to use expired design patents?

12:45 - After a rousing discussion about the rights of the public in expired design patents, we are breaking for lunch.

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