Design Day 2010

Design Day 2010 was held on April 6 at the USPTO. A number of our attorneys walked across the street to the USPTO and attended this annual event focused on US design patents. A wide variety of speakers gave presentations, including USPTO officials, industrial designers, an ITC judge and practitioners. The following article summarizes these presentations.

Robert Spear was the Master of Ceremonies. Mr. Spear is Supervisory Patent Examiner for Technology Center 2900 ("TC 2900"), which is devoted to examining design patent applications. A number of our attorneys have conducted personal interviews with Mr. Spear, and it was a pleasure to see this well-respected design examiner act in this official capacity.

The Director of TC 2900, Dr. Jasemine Chambers, gave the first presentation of the day on the "State of the Design Technology Center." She provided interesting statistics about design patent applications. For example, the average time between filing a design application and receiving a first Office Action was slightly more than 9 months in 2009; the average time from filing to issue was an impressive 15 months for 2009. For design applications being processed under accelerated examination ("the Rocket Docket") the filing-to-issue average was less than 5 months in 2009! Dr. Chambers indicated that such impressive compact prosecution was the result of several factors. One factor is the fact that TC 2900 has seen little attrition in recent years and is thus composed mainly of experienced examiners (about 100). Another factor is the emphasis placed on the use of personal interviews, which are helpful to identify the relevant issues early and to render prosecution more effective. Dr. Chambers also indicated that the number of new design applications filed show an early positive trend for the first months of 2010, suggesting that companies may be increasing their filings in 2010 as compared to 2009.

The second speaker of Design Day was Clive Roux, CEO of the Industrial Design Society of America. Mr. Roux presented the perspective of an industrial designer and stated that companies are placing an increased emphasis on the design of their products. Accordingly, design patents can be a valuable tool to protect these products. Mr. Roux also explained the process of creating new designs. One theme of the presentation was that the work of designing has shifted from the mere decorating of products to thinking of new designs in order to solve problems. Nowadays, designers find solutions to technical problems using a design approach with a focus on the end-user of products, as opposed to an engineering approach with a focus on the efficiency of making the products. Mr. Roux made the insightful comment that for many designers, it is impossible to separate the functional features of their work-product from their design features.

Joel Sincavage, Design Practice Specialist of TC 2900, then gave a presentation relating to the use of broken lines and surface shading. Mr. Sincavage stressed the importance of filing design applications with drawings that clearly convey the portions of the design that are being claimed. Mr. Sincavage used examples to show how surface shading can delineate a boundary between claimed and unclaimed subject matter. It was clear from the presentation that reviewing design drawings for compliance with U.S. standards is an important step before filing in order to help streamline prosecution and reduce cost.

Next, Karin Ferriter discussed the impact and implementation of the Hague Agreement, which provides for an international application process by which an applicant can receive a right that is enforceable in each of the member countries from a single application. Ms. Ferriter emphasized that, while the Hague Agreement does not harmonize design application filing requirements, it does offer significant advantages to the applicant in the way of cost savings. Although the U.S. has not implemented the Hague Agreement, such an implementation would have a great impact on design patent practice in the U.S. and around the world. We will keep a close eye on this proposed legislation.

The next presentation was by Janet Gongola from the Office of the Solicitor at the USPTO. Ms. Gongola discussed the role of the Solicitor's Office in litigation, legal and policy analysis, and disciplinary matters before the Office of Enrollment and Discipline. One of the duties of the Office of the Solicitor is to update patent examiners on recent court decisions.

The Honorable Charles E. Bullock, an Administrative Law Judge (ALJ) at the U.S. International Trade Commission (ITC), provided tips for litigating cases before the ITC. Judge Bullock stressed the importance of understanding the ground rules for the ALJ handling your case, since the rules can be different for each ALJ. Judge Bullock also indicated that practitioners can be more successful in obtaining favorable and expeditious rulings by limiting the complexity of their cases.

Damon Neagle presented on the recent International Seaway Trading Corp v. Walgreens and Crocs v. ITC decisions. We previously reported on the Crocs case on the Oblon website design page Federal Circuit Urges Caution in Construing Design Patents. These cases were recently decided by the U.S. Court of Appeals for the Federal Circuit and followed the guidance provided by the Egyptian Goddess decision. These cases raise a number of questions that remain open regarding anticipation and infringement of design patents.

Perry Saidman discussed the functionality of design patents in view of the recent Richardson v. Stanley Works case. We previously reported on the Richardsoncase on our website design page Factoring Out of Functional Elements Proper in Design Patent Infringement Analysis This case raises the issues of whether and how a design claim should be interpreted by factoring out the functional elements of the design.

The presentations concluded with a panel discussion on the topic of designs in recent court cases.

Design Day 2010 included presentations on many different topics that are currently shaping design patent practice. Based on the different opinions of the attendees and the number of questions raised, it is clear that design patent law is a dynamic area that is constantly changing.