Category Archives: Design

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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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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Apple v. Samsung: The Parties Weigh in on Next Steps

Apple v. Samsung: The Parties Weigh in on Next Steps

Author: Elizabeth D. Ferrill
Editor: J. Derek McCorquindale

On Tuesday, December 6, 2017, the United States Supreme Court issued its first opinion in a design patent case in more than 120 years.  In the long-running smartphone saga between Apple and Samsung, the issue before the Supreme Court was the proper interpretation of a 35 U.S.C. § 289.  Under this statute, when an infringer is found to have applied a patented design to any “article of manufacture,” that infringer is “liable to the [patent] owner to the extent of his total profit, but not less than $250[.]” Continue reading

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Prosecution History Estoppel & Unelected Designs

Author: Elizabeth D. Ferrill
Editor: Adriana L. Burgy

District Court Decision:  Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Case No. 16-3061 (C.D. Cal. Nov. 3, 2016).


In 2014, the Federal Circuit recognized that prosecution history estoppel applies to design patents, specifically in the context of amendments made in response to a restriction requirement. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, 739 F.3d 694 (Fed. Cir. 2014).  In Pacific Coast, the Federal Circuit held that cancelling an embodiment in a design patent application in response to a restriction requirement is a surrender of the cancelled subject matter and that such a surrender is made in order to secure the patent.  But Pacific Coast did not address the exact scope of the surrender, noting that it would be based on what design was elected, what design was not, and the circumstances of the case.   Continue reading

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The Internet of Things: Divided Infringement

Author: Kenie Ho, Matthew Hlinka, and James Stein
Editor: Stephanie M. Sanders

Some analysts predict the Internet of Things (IoT) market will grow from nearly $2 trillion in 2013 to $7 trillion in 2020. With this rapid growth comes new challenges for companies trying to protect and enforce their patent rights. Of particular concern for IoT companies is divided or joint infringement issues.

To prove infringement, a patent owner typically must show that a single party sells a product or performs a process that meets all elements of a patent claim. IoT inventions, however, often create value for consumers by connecting disparate devices—usually made by different entities—in creative ways. Continue reading

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