USPTO Requests Comments on Proposed Written Description Guidance for Design Patents

The United States Patent and Trademark Office has issued a Request for Comments on its proposed guidance to patent examiners regarding the written description requirement in Section 112 of the Patent Act with respect to design patents.  The proposed guidance would address situations where an amended or continuing application claims only a subset of the elements disclosed in an earlier or original application.  In other words, in the example below, if the original claim comprised the images on the left, can the amended claim cover only the subset of elements shown in solid lines on the right?

Federal Circuit Ruling Opens the Door to "Offensive" Design Patents

This week, the en banc Federal Circuit issued an opinion in In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015), holding that the relevant portion of Section 2(a) of the Trademark Act barring the patent office from registering scandalous, immoral or disparaging marks was an unconstitutional infringement of the First Amendment.  The Federal Circuit's decision has significant implications for another trademark case pending in the Court of Appeals for the Fourth Circuit, wherein the Washington Redskins seek to overturn the Patent and Trademark Office's cancellation of the "Redskins" trademark on the same grounds.   Pro-Football, Inc. v. Blackhorse,  No. 15-1874 (4th Cir. filed Aug. 6, 2015).  But what does this decision mean for design patent law, which retains the authority to refuse to issue patents covering ornamental designs deemed "offensive to any race, religion, sex, ethnic group or nationality?"  Find out after the jump. 

USTPO Design Patent Roundtable: Request for Comments on the Written Description Requirement For Designs

The United States Patent and Trademark Office is hosting a roundtable event to solicit public opinions regarding the written description requirement as applied to design applications in certain limited situations (Ostensibly the circumstances addressed in In re Owens). Members of the public are invited to participate. The roundtable will provide a forum for an informal discussion of the topics identified in this notice. Written comments in response to these topics have also been requested. Here is a link to the PTO’s request for comments for the full details.

What is noteworthy in the invitation is the Patent Office’s “initial impression … that generic boilerplate statements would not adequately reflect what the designer had in his or her possession at the time of filing the application” to meet the written description requirement for later amendments or continuations. The PTO seems to be suggesting that it will require a significant level of detail in any verbal written description submitted in a design application to lend support for design embodiments not expressly disclosed in the drawings.

If you wish to participate:

WHEN: March 5, 2014, beginning at 1:00 p.m. Eastern Daylight Time (EDT), and ending at 4:00 p.m. EDT. Written comments must be received on or before March 14, 2014 to ensure consideration.

WHERE: Madison Auditorium on the concourse level of the Madison Building, which is located at 600 Dulany Street, Alexandria, Virginia 22314

HOW: Members of the public who wish to participate in the roundtable as a speaker must do so by request in writing no later than February 14, 2014.  Registration on the day of the roundtable is available for observation only.  To register, email DesignRoundtable2014@uspto.gov and provide the following information: (1) Your name, title, and if applicable, company or organization, address, phone number, and email address; (2) whether you wish to attend in person or via Web cast; and (3) if you wish to make an oral presentation at the roundtable, which of the topics identified in section III, below, will be addressed and the approximate desired length of your presentation

WHAT: The Office seeks comments on the application of the written description requirement where only a subset of elements of the original disclosure are shown using solid lines in an amendment or in a continuation application.  Specifically, the Office seeks input on the following topics relating to the written description requirement under 35 U.S.C. 112(a) as applied to design applications in certain limited situations.

(A)  Factors in Determining Whether an Amended/Continuation Design Claim Satisfies the Written Description Requirement: When does “a design [that] includes only a subset of the originally disclosed elements (no new elements are introduced that were not originally disclosed), satisf[y] the written description requirement?” Proposed Factors to discuss:

1.      The presence of a common theme among the subset of elements forming the newly identified design claim, such as a common appearance;

2.      The subset of elements forming the newly identified design claim share an operational and/or visual connection due to the nature of the particular article of manufacture (e.g., set of tail lights of an automobile);

3.      The subset of elements forming the newly identified design claim is a self contained design within the original design;

4.      a fundamental relationship among the subset of elements forming the newly identified design claim is established by the context in which the elements appear;

5.      the subset of elements forming the newly identified design claim gives the same overall impression as the original design claim; and/or

6.      any additional factors, not listed above that would be useful for design patent examiners to consider

(B)  Establishing Adequate Written Description Support in the Original Disclosure: What are the “mechanisms applicants can use to demonstrate that they had possession of designs claimed in future amendments/continuations.” 

1.      A descriptive statement in the originally-filed application (e.g., that specifically identifies different combinations of elements which respectively form additional designs) could be a meaningful way for applicants to demonstrate that they had possession of designs claimed in future amendments/continuation applications.

2.      NOTE - The Office’s initial impression is that generic boilerplate statements would not adequately reflect what the designer had in his or her possession at the time of filing the application.

FOR FURTHER INFORMATION CONTACT:

Registration and speaker presentations request should be directed to the attention of Robert Olszewski, Director, Technology Center 2900, by telephone at 571–272–2200, or by email to mrobert.olszewski@uspto.gov. Requests for additional information regarding the topics for written comments and discussion at the roundtable event should be directed to Nicole Dretar Haines, Senior Legal Advisor, Office of Patent Legal Administration, by telephone at 571–272–7717, or by email to mnicole.haines@uspto.gov.

Submitted comments will be available to the public at http://www.uspto.gov/patents/init_events/index.jsp. For additional detail please refer to the Federal Register /Vol. 79, No. 25 /Thursday, February 6, 2014 /Notices.

Streamlined International Filing Soon To Be a Reality

Obtaining design rights in multiple countries will soon become easier for design patent applicants.

The United States is currently in the final stages of implementing an international treaty related to design rights known as the Hague Agreement.

The Hague Agreement simplifies the process for obtaining international design rights by allowing an applicant to file a single, standardized international design application that may then be pursued in any member nations designated by the applicant. This procedure is roughly similar to the one for international utility patent applications provided for by the Patent Cooperation Treaty.

On January 14, the USPTO held a public forum to discuss its proposed rules for implementing the Hague Agreement.

The proposed rules include the following major changes for design applicants:

• Standardizing formal requirements for international design applications;

• Establishing the USPTO as an office through which international design applications may be filed and examined;

• Providing a right of priority with respect to international design applications; and

• Extending the patent term for design patents from 14 to 15 years from the date of patent grant, for applications filed on or after the date of entry into force of the treaty with respect to the United States, a date which is still forthcoming.

Interested parties now have until February 4, 2014 to submit comments to the USPTO on the proposed rules, available here.

Design Patent Links

Aside from the Federal Circuit’s decision in In re Owens, which we covered last week, it was a fairly quiet week in design patent law. However, this week promises to bring plenty of design patent news from Stanford’s Design Patents in the Modern World conference, which takes place on Friday and Saturday of this week. Here are the design patent links from the past week! 

According to the law firm of Smith & Hopen, USPTO hiring for design patent examiners has remained flat since 2008, whereas the number of examiners for utility patents has increased by 32% over that same period. This despite the fact that design applications rose by 14%. 

ComputerWorld noted the 13 design patents for the Microsoft surface that were recently issued by the PTO. Microsoft’s new design patents cover several aspects of the Surface, including its signature keyboard/covers.

Sarah Burstein, Associate Professor of Law at the University of Oklahoma, provided her analysis of In re Owens in a guest post on Patently-O.

Professor Burstein will be among several design patent scholars presenting at Stanford’s design patent conference, “Design Patents in the Modern World.” The conference is scheduled to take place this Friday and Saturday 4/5-4/6. Professor Andrew Torrance of the University of Kansas School of Law will also be presenting a paper co-authored by myself entitled “(R)evolution in Design Patent Subject Matter: The Shifting Meaning of ‘Article of Manufacture.’” The conference is open to the public. Any design patent enthusiasts planning to attend should register here.

Upcoming Events

We here at The Ordinary Observer wanted to spread the word about a couple of design patent-related events to be held in the next few weeks that promise to be very interesting.

On Tuesday, April 6, the USPTO will host its Fourth Annual Design Day Open House and Conference. “Design Day 2010: The Art of Design” is a day-long program that will provide a forum for design practitioners from around the country to meet with USPTO officials and discuss the state of design patent examination. Similar to previous years, the afternoon session will focus on industry presentations and highlight the unique role that design patents play within various industry sectors. Recent case law will also be discussed. Events will be held from 8:00 until 4:30. The program is open to all and there is no fee. However, for planning purposes pre-registration is encouraged and can be done on-line at http://www.aipla.org.

Also, on Thursday, April 15 at 2:00pm ET, the IPO will host a webinar entitled “Design Patents: The Latest from the Federal Circuit.” The webinar will address Int’l Seaway Trading v. Walgreens [analyzed here], Croc v. ITC, and Richardson v. Stanley Works, three recent design patent decisions that issued from the Federal Circuit. The featured speakers will include Christopher V. Carani, of McAndrews, Held & Malloy, Ltd.; Robert S. Katz, of Banner & Witcoff, Ltd.; and Damian Porcari, of Ford Global Technologies LLC. Registration information for the webinar can be found here.