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?

Reddy v. Lowe’s Companies, Inc. – “As Shown and Described” means “As Shown”

In December, 2013, the Ordinary Observer initially reported on Reddy v. Lowe's Companies, Inc., (1:13-cv-13016), a case filed in the District of Massachusetts on November 25, 2013, concerning U.S. Design Patent No D677,423.  This week, Judge Young issued a memorandum in that case construing the claim of the D'423 Patent.  Judge Young's construction raises some questions as to the court's treatment of narrative elements of the claimed design which warrant further discussion.

The D'423 Patent is entitled "bathroom vanity light shade."  The left-hand image below shows two figures excerpted from the patent, Figures 1 and 2, which are fairly representative.  The right-hand image is a screen shot of what may be an accused device produced by the Defendants.

The claim of this patent is directed to "[t]he ornamental design for a bathroom vanity light shade, as shown and described."  The Court's present memorandum has little to say about what is shown.  It principally concerns what is described.

The specification of the D'423 Patent includes a brief narrative:

The bathroom vanity light shade is an ornamental fixture consisting of a rectangular, metal rod skeleton, wrapped in fabric on three sides (front side, left side, right side), with a stationary acrylic diffuser bottom. The bathroom vanity light shade mounts on the wall with top/back exposed mounting rod.

Virtually nothing recited in the narrative can be visually seen in the patent figures.  The shading applied to four of the sides indicates those surfaces are intended to be transparent, but there is no visible evidence of the so-called rod skeleton, or specific imagery distinguishing fabric and acrylic sides.

This sort of narrative description is unusual but generally not impermissible.  Patent & Trademark Office regulations state, "No description, other than a reference to the drawing, is ordinarily required."  (37 C.F.R. § 1.153(a)).  "However, while not required, such a description is not prohibited and may be incorporated, at applicant’s option, into the specification or may be provided in a separate paper." (M.P.E.P. § 1503.01).   An examiner can object to the inclusion of descriptive statements which are unclear or inaccurate, but absent a proper objection, the PTO will generally permit an applicant to incorporate descriptive statements into the claim by adding the words "and described" after "shown" in the traditional claim language, “The ornamental design for (the article which embodies the design or to which it is applied) as shown.”  (Id.).  The patent in this case claims "[t]he ornamental design for a bathroom vanity light shade, as shown and described."

Judge Young's approach represents a substantial diversion from PTO practices.  He concludes that design patents operate under a "figure-only" framework, where:

any written description that goes beyond the scope of the figures would be unprotected by the patent, and thus ought not be part of the construed claim.  Thus, the references to "wrapped in fabric" and an "acrylic diffuser bottom," since they are not shown in the figures, would stretch beyond the patent.

Judge Young proposes that regulations allow only "written descriptions that clarify features on an existing drawn figure" and not "written descriptions that add new features not present on the figure."  Because "fabric side" and "acrylic diffuser bottom" may be viewed as added features, Judge Young contends these statements are best viewed as a "preferred embodiment," though he admits, "they probably ought not have been included when the patent was issued."

The defendants also argued that the patentee was estopped from arguing the acrylic diffuser and fabric sides were not limitations on the claims based on statements made by the patentee during the prosecution of the patent.  Judge Young rejected this argument, finding the prosecution history subject to multiple interpretations and therefore not a clear disavowal of claim scope.

Judge Young's construction in this case is difficult to square with PTO regulations allowing descriptive  statements in the specification of design patents to "supplement the drawing disclosure to define the scope of protection sought by the claim."  (M.P.E.P. § 1504.04).  While the Judge correctly places a strong emphasis on the figures as the best description of the claimed invention, effectively ignoring narrative statements in the written description of a design patent is relatively unprecedented.  The court draws a distinction between narrative statements that clarify, such as those that disclaim broken lines appearing in the drawings, and those that add new features, but the line between the two is muddy.  If a patentee may use words to disclaim broken lines, why then, can a patentee not use descriptive statements to disclaim materials which do not form part of the claimed invention (i.e., materials except acrylic and fabric)? 

This is not likely a case where claim construction is effectively determinant.  Judge Young's construction is expressly without prejudice to future jury instructions or other grounds of invalidity and non-enforceability.  Furthermore, while the patentee has obtained a construction which likely help their arguments in favor of infringement, for the purpose of invalidity, the plaintiff faces the prospect of defending as novel and non-obvious a light shade in the shape of a rectangular box having four sides and two open sides.

We will be on the look out for future developments in this case.

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.

Advanced Design Patenting Techniques – Part II

In our last post we discussed a number of advanced design patenting techniques used to broaden the scope protection afforded by a design patent.  Using examples from granted patents we discussed continuation application practice, claiming features not immediately separable, and including multiple embodiments in one application.  This week we continue our discussion with a number of additional techniques. 

Advanced Design Patenting Techniques – Part I

The days of treating design patent applications as unsophisticated and easily drafted alternatives to utility applications may be at an end.  More and more patent practitioners are recognizing the power of design patent applications and particularly how mastering advanced design patent techniques can provide broader protection.  If you have any reservations about using such advanced techniques, let us assure you that design patent giants the likes of Apple and Google have been doing it for years and with great success.  We outline a number of advanced techniques using granted patents from these heavy weights. 

Federal Circuit Alert - In re Owens

On Tuesday, the Federal Circuit issued a precedential design patent decision with major implications for the written description requirement for design patents in the case of In re Owens, No. 2012-1261, --- F.3d --- (Fed. Cir. March 26, 2013).  In re Owens was an appeal from a final rejection for a design application on what appears to be a mouthwash bottle designed by Procter & Gamble (“P&G”).  On Dec. 21, 2004, P&G filed design patent application No. 29/219,709 (“the ’709 application”), which claimed the bottle as shown on the left, below.   On Nov. 7, 2006, the ’709 application issued as U.S. Design Patent No. 531,515.  On February 2, 2006, P&G also filed U.S. design patent Application No. 29/253,172 (“the ’172 application”).  The ‘172 application claimed priority to the ‘709 application, and claimed the bottle as shown in the center, below.

P&G conceded to the PTO that the design of the ‘172 application had been on sale for more than a year before the application date and that without a valid priority claim to the ‘709 application, the ’172 would be obviated by prior sales.  Unfortunately for P&G, the Examiner rejected the ‘172 application, finding that the new, dashed horizontal line in the ‘172 application defined an entirely new trapezoidal shape which he considered new matter, not within the disclosure of the ‘709 application, as shown on the right, below.  “As such, the examiner rejected the ’172 application for lack of written description under 35 U.S.C. § 112, ¶ 1, and furthermore rejected the application as unpatentably obvious in view of the earlier-sold bottles under 35 U.S.C. § 103(a).”  The Board affirmed the rejection, finding that P&G “had claimed previously undisclosed ‘trapezoidal sections occupying  part, but not all, of the surface area of the front and back panels.’”

On appeal, the Federal Circuit panel, which included judges Prost, Moore, and Wallach, stated that “[t]he test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as ‘whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. … Thus, when an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application.” (internal citations omitted). 

Both the P&G and the PTO agreed on appeal that “a design patentee  may, under certain circumstances, introduce via amendment a straight  broken line without adding new matter, even ‘[w]here no [corresponding] boundary line is shown in a design application as originally filed.’” (citing MPEP § 1503.02) (alterations in original).  P&G argued that the unclaimed, horizontal line it introduced in the ‘172 application did not introduce a new trapezoidal shape, but merely claimed only the upper portion of the design of the ‘709 application, citing In re Daniels, 144 F.3d 1452, (Fed. Cir.1998).  The patentee of Daniels removed  an entire floral design element from a prior design application for a container (a “leecher”), as shown below.  

 

There, the Federal Circuit held that “Mr. Daniels is entitled to the parent application's filing date for the subject matter of the continuation, thus obviating the rejection based on the intervening publication.”  The court reasoned:

The leecher as an article of manufacture is clearly visible in the earlier design application, demonstrating to the artisan viewing that application that Mr. Daniels had possession at that time of the later claimed design of that article. The leaf ornamentation did not obscure the design of the leecher, all details of which are visible in the drawings of the earlier application. The leaf design is a mere indicium that does not override the underlying design. The subject matter of the later application is common to that of the earlier application. In the context of 35 U.S.C. § 171 (“design for an article of manufacture” is the subject matter of a design patent), it is apparent that the earlier application contains a description of what is claimed in the later application.

In re Daniels at 1456-1457 (internal citations omitted)

But the Federal Circuit panel distinguished Daniels, reasoning that there, the original application disclosed a bottle that one of skill would recognize as patentable, even if the floral design was removed.  The panel further reasoned that “the question for written description purposes is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel  might be claimed separately from the remainder  of that area.”  (citing Ariad, 598 F.3d at 1351.).  Thus, for purposes of design applications, it appears as though the written description requirement would now include an element of foreseeability.

The difficulty with In re Owens is that the ’709 application appears to disclose at least one embodiment of the ‘172 application.  For instance, if the ‘172 application were allowed, the design of the ‘709 application would appear to be within its scope.  Intuitively, practitioners seem to expect that the disclosure of one embodiment of an invention should be sufficient to support a broader claim.  However, the Federal Circuit’s citation of Ariad, although not discussed, appears to be apt.  There, the Federal Circuit held that the disclosure of a single embodiment was insufficient to support the written description of a claim with “far broader” scope:

Whatever thin thread of support a jury might find in the decoy-molecule hypothetical simply cannot bear the weight of the vast scope of these generic claims. See LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed.Cir.2005) (holding that "[a]fter reading the patent, a person of skill in the art would not understand" the patentee to have invented a generic method where the patent only disclosed one embodiment of it); Reiffin, 214 F.3d at 1345-46 (noting that the "scope of the right to exclude" must not "overreach the scope of the inventor's contribution to the field of art as described in the patent specification"); … Here, the specification at best describes decoy molecule structures and hypothesizes with no accompanying description that they could be used to reduce NF-kB activity. Yet the asserted claims are far broader. We therefore conclude that the jury lacked substantial evidence for its verdict that the asserted claims were supported by adequate written description, and thus hold the asserted claims invalid.

Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F. 3d 1336, 1337 (Fed. Cir .2010) (en banc).

Thus, after In re Owens, if a designer of skill in the art would not reasonably have foreseen the subject matter claimed by a continuation application, the claims may not be supported by the written description of the parent.  Based on this interpretation of the law, it is likely that the written description requirement will become a more robust doctrine in design patent law, and a major weapon to design patent defendants.   It will be interesting to see whether the Federal Circuit reviews this decision en banc.