Celia Murphy, Supervisory Patent Examiner for technology Center 2900 (‘TC 2900’) was the host for Design Day 2014, the 8th Annual Design Day. Design Day 2014 appeared to have a significant increase in participants as the USPTO Madison Auditorium had only a few empty seats throughout the day.
Andy Faile, Deputy Commission for Patent Operations started the day off by highlighting two initiatives by the USPTO: interview practice, and a technical training program. Mr. Faile noted that a growing number of interviews were being conducted, benefiting examiners and practitioners alike, and that the number of requests for WebEx interviews was also increasing.
Regarding the technical training program, Mr. Faile invited interested outside parties to come to the USPTO to provide instructions for Examiners on the state of the art. Finally, Mr. Faile commented on the increase in annual design filings, which have roughly tripled between 1992 and 2013.
Following the welcoming remarks, Robert Olszewski, Director of Technology Center 2900 reported on the State of the Design Technology Center. Mr. Olszewski indicated that while TC 2900 is still the smallest technology center, it is expanding. TC 2900 currently employs 120 Patent Examiners, a number which is expected to grow to 150 by the end of 2014. This is part of an effort to catch up with a backlog which has led 1st Office Action pendency to increase from 8.5 months in 2010 to 10.7 months in 2013.
As on Design Day 2013, David R. Gerk, Patent Attorney at the USPTO Office of Policy and International Affairs, reported on the implementation of the Hague agreement. Mr. Gerk first provided a brief overview of the Hague system, which provides for the centralized acquisition and maintenance of industrial designs.
Mr. Gerk noted that the Republic of Korea will become a member of the Hague agreement on July 1st 2014, and that China, Japan, Russia and Canada are actively pursuing membership. Mr. Gerk then proceeded to debunk some Hague agreement ‘myths.’ In particular, he noted that the United States is not currently a member, and will become one no sooner than 3 months from the date the U.S. deposits its instrument of ratification with WIPO.
With respect to drawings, Mr. Gerk indicated that drawings will indeed be reviewed by WIPO and by the local offices. Therefore, Applicants will still need to comply with U.S. drawing requirements should they wish to pursue a U.S. Design Patent.
Finally, Mr. Gerk noted that 100 designs, described by 100 or more drawings, may be filed in a single Hague application, and the International Bureau may issue a single international registration. However, if the United States is designated as a contracting party, the USPTO will issue a restriction requirement where appropriate.
Following a break, Jihoon Kim, Deputy Director of the Design Examination Policy Division for the Korean Intellectual Property Office (KIPO) gave an informative presentation on recent changes in GUI design applications at KIPO, which we previously discussed in more detail.
Joel Sincavage, Design Practice Specialist of TC 2900, presented a summary of the USPTO roundtable on the written description requirement for design patent applications and updated the audience as to the USPTO's progress with implementing policies and procedures. We previously commented on the USPTO's request for comments, the roundtable, and the IPO and AIPLA submitted comments.
Mr. Sincavage prompted controversy at Design Day 2013 with respect to the written description requirement and this controversy still continues. However, Mr. Sincavage did indicate that the proposed factors that were the subject of the roundtable will not be further pursued.
Instead, Mr. Sincavage indicated the USPTO would adopt policies that were consistent with Federal Circuit decisions; that it was not practical to include a written explanation in design patent applications; and that the USPTO will provide clear examples for the public and examiners. Although not specified during Design Day 2014, subsequent discussions with Mr. Sincavage and USPTO personnel indicated the USPTO would publicly propose rules/examples for review and comment prior to issuing final guidance.
The last presentation before the lunch break covered design patents in post-grant proceedings. Elizabeth Farrill of Finnegan LLP moderated a discussion with Administrative Patent Judges Trenton Ward and Jennifer Bisk, and Damon Neagle of Design IP. Judge Ward provided an overview of post-grant proceedings, identifying the 8 design IPRs filed thus far, and the 4 instituted. The IPR cases numbers are IPR2013-00072 (Final Decision on April 21, 2014 - not patentable), IPR2013-00259 (not instituted), IPR2013-00500 (instituted), IPR2013-00501 (instituted), IPR2013-00580 (instituted), IPR2014-00071 (not instituted), IPR2014-00542 (pending), and IPR2014-00555 (pending). The cases can be accessed at the USPTO PTAB website.
Damon Nagel provided a brief explanation of his IPR (IPR2013-00259 - ATAS v. Centria), and commented on the application of a Rosen reference. Specifically, Mr. Nagel was concerned that an experienced examiner may apply a very strict Rosen-based test in relying on a primary reference, where a court (e.g., a District Court) may apply a lower standard of review. Mr. Nagel also discussed some of the apparent deficiencies in his IPR, which was not instituted, including the decision to not utilize an expert due to budget concerns.
Judge Ward reminded petitioners to provide a detailed analysis for a limited number of challenges, rather than identify many challenges, and support conclusions with sound, complete legal analysis, with pinpoint citations to evidentiary support. Judge Bisk reminded petitioners they don't get much of a chance to do anything after the IPR is initiated, and stated Petitioner merely gets to respond to a Patent Office response - the petition is the entire case - use the best arguments and the best evidence.
Ms. Farrill suggested using color in the petition, as the APJs can see the color when filed, and Mr. Nagel suggested the use of an expert, with caution from APJs Ward and Bisk that expert opinions should be used on factual issues and should not echo attorney arguments.
Michael Jacobs began the post-lunch portion of Design Day 2014 with a presentation on litigating design patent cases. Mr. Jacobs brought the perspective of someone who was relatively unfamiliar with design patent litigation prior to severing as co-lead counsel in a high-profile smartphone case that included design patents. Mr. Jacobs highlighted some of the seemingly contradictory instructions judges have been given regarding verbally construing a design patent claim as well as the difficultly jurors face in having to view the evidence from the perspective of an ordinary designer for some arguments and as an ordinary observer for others.
Charles Mauro of Mauro New Media and Elizabeth Ferrill of Finnegan LLP gave the next presentation, which focused on new cutting edge technology and the significant protection issues that are being raised. Mr. Mauro began with a discussion of cutting edge technology, including personal communication devices, personal robots, and self-driving cars, that was only found is science fiction in the not too distant past. Ms. Ferrill then stepped through some difficulties raised by trying to protect this new technology with design patents. Mr. Mauro concluded this presentation with a discussion of what he believes will be the next evolution of cutting edge technology.
Martha Moore, Rachael Brown, and Katie Maksym provided an exciting and passionate discussion on how they "Just Do It" at Nike. The presentation included a background of Nike's business by Ms. Maksym and some of Nike's history, development, and involvement in sports and athletes by Ms. Moore, highlighting Nike's design achievements together with a few failures. Ms. Brown provided an overview of how Nike captures design IP, including coordinating IP procurements services in Trademark, Patents, and Copyrights. Erik Maurer of Banner & Witcoff, Ltd. described some of the enforcement actions he has been involved with in representing Nike, including cease and design letters, lawsuits, seizure by U.S. Marshalls, and dealing with repeat offenders.
Margaret Polson of Oppedahl Patent Law Firm LLC provided a case law update concerning designs. Many of the cases discussed by Ms. Polson have been previously discussed here, including In re Owens, Keurig v. Rogers,Pacific Coast v. Malibu Boats, High Point v. Buyers Direct, and also mentioned the above-noted design IPRs. Ms. Polson also discussed several other cases, including Z Produx v. Make-up Art Cosmetics, Ethicon v. Covidien, McIntire v. Sunrise Specialty, Sofpool v. Kmart, and MRC Innovations v. Hunter.