REPORT FROM THE FRONT LINES: PATENT OFFICE PROCEEDINGS

Transcription

1 Design At Work USPTO Design Day 2018 REPORT FROM THE FRONT LINES: PATENT OFFICE PROCEEDINGS George Raynal Saidman DesignLaw Group

2 INTER PARTES REVIEW POST GRANT REVIEW SUPPLEMENTAL EXAMINATION REEXAMINATION

3 USPTO e-foia PUBLICLY AVAILABLE DECISIONS 175

4 USPTO e-foia PUBLICLY AVAILABLE DECISIONS

5 109 decisions % % % MOST RECENT DECISION FROM %

6 Not unpatentable under 171

7 DISPOSITIONS AFFIRMED REVERSED

8 SINGLE VIEW CLAIM REJECTED UNDER 35 U.S.C. 112 EX PARTE KAUFMAN rejection not sustained IN RE MAATITA FED. CIR Dyk Reyna Stoll on appeal to the Federal Circuit; argued 4/6/18 other issued patents D573,335 D573,335 D572,885 Single view claim rejected under 35 U.S.C. 112 as not understandable to a designer of ordinary skill without resorting to conjecture Examiner argued that three-dimensional aspects could not be reasonably ascertained from the top view; concern about claim scope Applicant argued that single view is compared to accused design from the same view Court requested supplemental briefs regarding inventive concepts

9 EX PARTE GOLDEN Appeal No D457,470

10 INTER PARTES REVIEW AS OF 4/18/18 IPR INSTITUTION 43% GRANTED 57% DENIED - PATENT SURVIVES 37 IPRs have been filed for design patents. Institution was denied in 21 and granted in 16. None pending. Most recently filed petition: October 14, 2017 IPR FINAL WRITTEN DECISIONS 71% UNPATENTABLE 29% NOT UNPATENTABLE - PATENT SURVIVES Of the 16 instituted IPRs, there are 14 patents with final written decisions, 10 finding the claimed design unpatentable and 4 finding the claimed design not unpatentable. 2 are pending.

11 INTER PARTES REVIEW KOLCRAFT ENTERPRISES v. GRACO CHILDREN S PRODUCTS IPR & IPR FED. CIR D604,970 D616,231 IPR Final Decision: UNPATENTABLE PATENTED DESIGN PRIOR ART JOHNS MANVILLE v. KNAUF INSULATION IPR & IPR FED. CIR D631,670 IPR Final Decision: NOT UNPATENTABLE PATENTED DESIGN PRIOR ART

12 POST GRANT REVIEW AS OF 4/18/18 PGR INSTITUTION 3 DENIED 1 GRANTED 5 PGRs have been filed for design patents. Institution has been denied in 3 and granted in 1. Another settled and terminated before institution.

13 POST GRANT REVIEW PTAB (PGR) first PGR trial instituted not instituted on 171 ornamental challenge C&D ZODIAC, INC. v. B/E AEROSPACE, INC. PGR , October 21, 2017 D764,031 OFFER FOR SALE UTILITY APP PATENTED DESIGN priority denied

14 SUPPLEMENTAL EXAMINATION PATENTED PRIOR ART - NO SNQ PATENTED PATENTED PRIOR ART - SNQ PRIOR ART - SNQ D545,180 96/000,032 Reexamination ordered; Patent Survived D644,807 96/000,201 Reexamination ordered; Pending PRIOR ART - SNQ D629,049 96/000,222 Reexamination ordered; Pending

15 REEXAMINATION 54 requests for design patent reexamination since by 3rd party requesters; 3 by patent owners 31 named; 20 anonymous reexamination ordered in 93% (43) 4 requests denied; 19 reexaminations pending, 1 on appeal reexamination certificates issued for 31 87% (27) Confirm Patentability; 13% (4) Cancelled (compare to 57% IPR non-institution but 71% cancellation)