Design Patent Quality Examiner s Perspective

Transcription

1 NAPP s 20 th Annual Meeting and Conference Design Patent Quality Examiner s Perspective Joel Sincavage Design Practice Specialist, Tech Center 2900 July 28, 2016 Design Patent Quality

2 Design Patent Quality USPTO s Enhanced Patent Quality Initiative Pillar 1 - Excellence in Work Products Provide the best work products and services at every stage of the patent process Pillar 2 - Excellence in Measuring Patent Quality Provide excellence in measuring patent quality, ensuring appropriate quality metrics target examination issues requiring attention Pillar 3 - Excellence in Customer Service Improve customer experience with an emphasis on customer service Design Patent Quality 2

3 Design Patent Quality USPTO s Enhanced Patent Quality Initiative Design Patent Publication Quality The Design Patent Publication Quality program is investigating the feasibility of improving the image quality of of published design design patents. patents. Degradation of finally of finally printed printed patent grant images, relative to their incoming patent application images, is significant in design patents especially because the drawings define the claimed invention. Degradation of these images in the printed patent can have significant impact on our external stakeholders. Design Patent Quality 3

4 Design Patent Quality USPTO s Enhanced Patent Quality Initiative Design Patent Publication Quality By October of this year we expect to begin seeing design patent grants with image quality equivalent to the images that were filed. A copy of the grant will be available on Supplemental Content tab in Public PAIR (Patent Application Information Retrieval). Design Patent Quality 4

5 Design Patent Quality USPTO s Enhanced Patent Quality Initiative Pillar 1 - Excellence in Work Products Provide the best work products and services at every stage of the patent process Pillar 2 - Excellence in Measuring Patent Quality Provide excellence in measuring patent quality, ensuring appropriate quality metrics target examination issues requiring attention Pillar 3 - Excellence in Customer Service Improve customer experience with an emphasis on customer service Design Patent Quality 5

6 Design patent quality Examiner s concerns and challenges. Design Patent Quality 6

7 Am I paying the right amount of time and attention to the right things? Design Patent Quality 7

8 What are the right things? Definiteness Enablement Ornamentality Planning a search Searching Quayle Actions Prior art rejections New matter Restrictions Reissues Compact Prosecution Finals Case law Patentability Affidavits & Declarations Clear & Compete Record Applicant Responses Allowances Design Patent Quality 8

9 Am I doing the right amount of work? 110% or above Outstanding 103% 109% Commendable 95% 102% Fully Successful 88% 94% Marginal below 88% Unacceptable Design Patent Quality 9

10 Is my quality good enough? Outstanding The error rate is 0% 4.49%. Commendable The error rate is 4.50% 5.49%. Fully Successful The error rate is 5.50% 6.49%. Marginal The error rate is 6.50% 7.49%. Unacceptable The error rate is greater than or equal to 7.50%. Design Patent Quality 10

11 How can I do: Outstanding quality work and Outstanding production? Design Patent Quality 11

12 The rich number of resources presents a challenging search. U.S. Design patents U.S. Utility patents and Publications Foreign Utility patents, EPO, JPO, Derwent Non-patent literature Design Patent Quality 12

13 The rich number of resources presents a challenging search. Designs from 42 countries and issuing authorities Design Patent Quality 13

14 Have I searched enough? Design Patent Quality 14

15 Quality & Quantity Depending on the subject matter, the best search falls between an exhaustive search and an adequate search. Design Patent Quality 15

16 Clarity in the drawings Design Patent Quality 16

17 Examiners are concerned with Drawing clarity: During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the the metes and bounds of the claimed invention. See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc). Design Patent Quality 17

18 Examiners are concerned with Drawing clarity: Design Patent Quality 18

19 Examiners are concerned with Drawing clarity: Design Patent Quality 19

20 Examiners are concerned with Drawing clarity: Display Screen with Icon Design Patent Quality 20

21 Display Screen with Transitional Icon Design Patent Quality 21

22 Examiners are concerned with Drawing clarity: Display Screen with Icon Design Patent Quality 22

23 What about objections? Design Patent Quality 23

24 If a description is not correct but we know what is meant, should we require correction? E.g.: Fig. 8 is partially enlarged view of Fig 2. Crx: Fig. 8 is a detail view of Fig 2. Design Patent Quality 24

25 Pillar 3 - Excellence in Customer Service Improve customer experience with an emphasis on customer service Design Patent Quality 25

26 Productive interviews Emphasis upon including the substance of interviews in the record In 2016 design examiners logged 1,511 of hours in applicant interviews. Design Patent Quality 26

27 Should I allow the application with requirements to correct the drawings? Design Patent Quality 27

28 Should these requirements be made at allowance? Convert the lines in the bottom view to broken lines. Design Patent Quality 28

29 Should this requirement be made at allowance? Design Patent Quality 29

30 Questions Design Patent Quality 30

31 Thank You Design Patent Quality 31

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