Design At Work USPTO Design Day 2018 REPORT FROM THE FRONT LINES: PATENT OFFICE PROCEEDINGS George Raynal Saidman DesignLaw Group
INTER PARTES REVIEW POST GRANT REVIEW SUPPLEMENTAL EXAMINATION REEXAMINATION
USPTO e-foia PUBLICLY AVAILABLE DECISIONS https://e-foia.uspto.gov 175
USPTO e-foia PUBLICLY AVAILABLE DECISIONS https://e-foia.uspto.gov
109 decisions 102 10% 103 75% 171 10% MOST RECENT DECISION FROM 2015 112 12%
Not unpatentable under 171
50 40 40 DISPOSITIONS 30 28 20 10 12 8 24 24 19 17 15 7 9 9 18 10 8 21 18 AFFIRMED REVERSED 0 3 2012 2013 2014 2015 2016 2017
SINGLE VIEW CLAIM REJECTED UNDER 35 U.S.C. 112 EX PARTE KAUFMAN 2012-003545 112 rejection not sustained IN RE MAATITA FED. CIR. 17-2037 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
EX PARTE GOLDEN Appeal No. 2001-0337 D457,470
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.
INTER PARTES REVIEW KOLCRAFT ENTERPRISES v. GRACO CHILDREN S PRODUCTS IPR2016-00816 & IPR2016-00826 FED. CIR. 18-1259 D604,970 D616,231 IPR Final Decision: UNPATENTABLE PATENTED DESIGN PRIOR ART JOHNS MANVILLE v. KNAUF INSULATION IPR2015-01453 & IPR2016-00130 FED. CIR. 17-1807 D631,670 IPR Final Decision: NOT UNPATENTABLE PATENTED DESIGN PRIOR ART
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.
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 2017-00019, October 21, 2017 D764,031 OFFER FOR SALE UTILITY APP PATENTED DESIGN priority denied
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
REEXAMINATION 54 requests for design patent reexamination since 2012 51 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)