Category Archives: Patent Applications

Five Fun (!) Facts About US Design Patent Examination That You Probably Didn’t Know

Five Fun (!) Facts About US Design Patent Examination That You Probably Didn’t Know

Author: Elizabeth D. Ferrill
Editor: Razi Safi*

Design patent examination has been subject to many recent changes at the USPTO, including changes in the application backlog and foreign filing.  While design patents made up just under 8.0% of the patents issued in 2015, the trends in design patent examination are still instructive, especially when compared to utility patent examination.

Fun Fact No. 1.  The backlog for most patent applications is decreasing; meanwhile, the design application backlog is increasing.

In May 2017, there were only 542,840 unexamined utility, plant, and reexam patent applications pending¾a 67,000 plus reduction from October 2014.  (Remember that as patents are examined, more are filed, so this means that not only did the PTO keep up with the new filings, it also chipped away at the backlog.) (See Patents Dashboard).  Unfortunately, for designs, the backlog has increased during this same time period from 38,094 unexamined design applications in October 2014 to 42,883 as of May 2017.  There is hope for the future, as the technology center responsible for designs has been hiring and now boasts 187 patent examiners. Continue reading

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Examining the Examiner Interview

Author: Adriana L. Burgy
Editor:  Michelle Pacholec, Ph.D.

Compact or streamlined prosecution is in vogue in prosecution circles these days.  While examiner interviews are a tried and true “old” tool in a prosecutor’s tool box, they are reemerging as a means to facilitate compact or streamline prosecution, benefiting both clients and the USPTO. Some of the advantages that are driving their popularity include the fact that examiner interviews can reduce prosecution costs, minimize arguments of record, and decrease prosecution time.  Continue reading

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Markush Groups: Traps for the Unwary

Author: Amy Proctor
Editor: Adriana L. Burgy

While many patent examiners prefer Markush claims, which recite lists of alternatively useable species, to be formatted as “selected from the group consisting of A, B, and C,” Applicants should carefully consider claim construction before adopting this format. “A trap for the unwary claim drafter using Markush group language is the severely closed nature of a Markush group.”  3-8 Chisum on Patents § 8.06 (2017).
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Reflections on USPTO Design Day 2017: What’s Next?

Reflections on USPTO Design Day 2017: What’s Next?

Author: Elizabeth D. Ferrill
Editor: Eric P. Raciti

Each April, the design patent community gathers at the USPTO to discuss design prosecution and protection. This year, on April 25, another sell-out crowd of over 300 people attended the 11th Annual USPTO Design Day, which is sponsored by the USPTO, IPO, AIPLA, the IP section of the ABA, and the IDSA. This year’s event including important updates on changes in Technology Center 2900 (which is responsible for all design examination), international protection of designs, including a special guest from the Canadian IP office, as well as evolving trends in fashion, the usefulness of motions to dismiss in design patent cases, and the potential effect of prosecution history in litigation and claim construction.
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Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Author: J. Derek McCorquindale
Editor: Eric P. Raciti

The recent Federal Circuit decision, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. et al., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), explained the anticipation teachings of earlier precedent and unanimously reversed the invalidity determination of the Patent Trial and Appeal Board (“PTAB”). In the March 14, 2017, panel opinion by Circuit Judge Moore, alongside Circuit Judges Lourie and Taranto, the court rejected the PTAB’s anticipation analysis and corrected a misapplication of 35 U.S.C. § 102 used to invalidate a claim. Continue reading

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