DESIGN PATENTS: STATISTICS, TRENDS AND PRACTICAL TIPS

1. DESIGN PATENTS: STATISTICS, TRENDS AND PRACTICAL TIPS DONALD STUDEBAKER AIPLA IP PRACTICE IN JAPAN COMMITTEE OCTOBER 2013 PRE-MEETING

2. Table of Contents • USPTO Design Group Organization • USPTO Design Patent Filing Statistics • Who Obtains US Design Patents • Recent Decisions • Apple v Samsung (Fed. Cir. 2012) • In re Owens (Fed Cir. 2013) • USPTO Design Day 2013 • Practical Tips 2

3. USPTO DESIGN GROUP ORGANIZATION . Section Heading From Design Day 2013; State of the Technology Center; Robert Olszewski 3

4. USPTO DESIGN GROUP ORGANIZATION • 1-Director • 6-Supervisory Patent Examiners (SPE’s) • 1-Design Specialist • 102 Patent Examiners (56 Hotelers) • 1-Technical Support Team Leader • 10-Technical Support Personnel (8 Hotelers) • 1-Office Manager From Design Day 2013; State of the Technology Center; Robert Olszewski 4

5. USPTO DESIGN GROUP ORGANIZATION EXAMINER EXPERIENCE RELATIVELY SENIOR GROUP OF EXAMINERS GS 14 – 76 Examiners GS 13 – 6 Examiners GS 12 – 7 Examiners GS 11 – 4 Examiners GS 9 – 6 Examiners GS 7 – 3 Examiners From Design Day 2013; State of the Technology Center; Robert Olszewski 5

6. USPTO DESIGN GROUP ORGANIZATION USPTO DESIGN PATENT FILING STATISTICS From Design Day 2013; State of the Technology Center; Robert Olszewski 6

7. USPTO DESIGN PATENT FILING STATISTICS From Design Day 2013; State of the Technology Center; Robert Olszewski 7

8. USPTO DESIGN PATENT FILING STATISTICS From Design Day 2013; State of the Technology Center; Robert Olszewski 8

9. USPTO DESIGN PATENT FILING STATISTICS From Design Day 2013; State of the Technology Center; Robert Olszewski 9

10. WHO OBTAINED US DESIGN PATENTS IN 2012 IPO; Top 300 Organizations Granted U.S. Patents in 2012; Companies Granted the Most Design Patents; June 19, 2013 10

11. POWER OF THE BROKEN LINE • Design patent practitioners routinely amend design drawings from solid lines to broken lines in order to claim a part of the overall design, rather than the entire design.  • To save up front costs, an applicant often initially files a single set of drawings directed toward an entire article, showing all the important aspects of the design in solid lines • After allowance of the initial embodiment, and hopefully after enough time has passed to confirm that the design has value, applicants file continuation applications including certain features of the claimed design in broken lines in order to “broaden” the scope of the design patent.  11

12. POWER OF THE BROKEN LINE • Examiners often permit applicants to amend design drawings by showing certain minor features in hidden lines, even though the originally filed drawings showed all the features in solid lines.  • This practice of converting solid lines to broken lines has long been permitted by the US Patent Office and is explicitly exempted from being treated as impermissible new matter in MPEP§1504.04. • The MPEP provides an example where removal of three-dimensional surface treatment, such as beading, grooves, or ribs, would not be permitted, but that “an amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration.” 12

13. Apple v. Samsung (Fed Cir. 2012) • The iPhone was introduced on January 9, 2007 and during the introduction, Steve Jobs stated “Boy have we patented it.”   • Apple also made it very clear that they were going to defend the design of the iPhone. • Apple filed four original design applications just four days before the introduction of the iPhone. • Apple filed several subsequent divisional applications. 13

14. Apple v. Samsung (Fed Cir. 2012) Cont. • Apple’s divisional applications broadened the scope of their original application by changing solid lined elements to broken lined elements.  • The broken lined elements then became unnecessary, and therefore a competitor’s product would only have to include the solid lined elements for there to be a finding of infringement. 14

15. Apple v. Samsung (Fed Cir. 2012) Cont. A COMPARISON OF APPLE’S PARENT DESIGN PATENT CLAIM AND THE SAMSUNG GALAXY S-4G NO INFRINGEMENT 15

16. Apple v. Samsung (Fed Cir. 2012) Cont. A COMPARISON OF APPLE’S CHILD DESIGN PATENT CLAIM AND THE SAMSUNG GALAXY S-4G INFRINGEMENT 16

17. In re Owens (Fed Cir. 2013) • The Federal Circuit issued a precedential design patent decision with major implications for the written description requirement for design patents. • In re Owens was an appeal from a final rejection for a design application directed to a bottle (presumably a mouthwash bottle) designed by Procter & Gamble (“P&G”). • P&G informed the USPTO that the design of the continuation application had been on sale for more than a year before the filing date of the continuation and that without a valid priority claim to the parent application, the design would be obviated by the prior sales.  17

18. In re Owens (Fed Cir. 2013) Cont. • P&G filed US Design Patent Application No. 29/219,709 (“the parent application”), on Dec. 21, 2004, which claimed the bottle shown below.  • The parent application issued as U.S. Design Patent No. 531,515, on November 7, 2006. 18

19. In re Owens (Fed Cir. 2013) Cont. • On February 2, 2006, P&G filed U.S. Design Patent Application No. 29/253,172 (“the child application”).   • The child application claimed priority to the parent application, and claimed the bottle as shown. • P&G claimed specific design elements on the top and side portions of the original bottle. • One particular feature was a portion of the pentagonal front face of the bottle directly below the bottle’s neck and circled to the right.  19

20. In re Owens (Fed Cir. 2013) Cont. • To create this claimed portion of the front panel, P&G added a broken line bisecting the pentagonal front panel.  As a result, the application depicted a trapezoidal area of the front panel just below the bottle’s neck with the broken line forming the base of the trapezoid. • During prosecution, the USPTO rejected the child application -- concluding that the new claim (as shown in the drawing) did not satisfy the written description requirement of 35 U.S.C. § 112. In other words, it was not apparent from the originally filed specification that the inventor was in possession of the invention as now claimed at the time of filing the parent application.  20

21. In re Owens (Fed Cir. 2013) Cont. • P&G's argument was that the area being claimed in the child application was already disclosed in the parent application (which is literally true). • However, the USPTO notes that the original application did not disclose the break-point for the trapezoidal area now being claimed. • The USPTO stated that nothing in the original application indicates that the portion now claimed could itself be a design. The USPTO’s position is that while applicants can amend claims by "ghosting" solid lines and vice-versa, applicants cannot further partition areas or define new portions and be in compliance with the written description requirement. 21

22. In re Owens (Fed Cir. 2013) Cont. • The Federal Circuit held that a broken line in a child design application, which served only to partition one part of the originally claimed design along a boundary not suggested in the parent application, created new matter not supported by the parent application. • Therefore, P&G could not rely on the earlier filing date of the parent application, rendering the child application unpatentable based on the fact that the design of the continuation application had been on sale for more than a year before the filing date of the child application.  22

23. USPTO DESIGN DAY 2013 Presentation by Joel Sincavage USPTO Design Practice Specialist 23

24. USPTO DESIGN DAY 2013 • At Design Day 2013, the USPTO announced that it has instituted a new examination policy and will no longer routinely permit an applicant to amend solid lines to broken lines!! • USPTO Design Practice Specialist, Joel Sincavage explained that the USPTO is now rejecting design applications where an applicant amends solid lines to broken lines, whether it be as part of an initially filed application, or as part of a continuation application. • The reason cited for the new examination policy is that there is no written description for the design encompassing broken lines. The USPTO described the issue as one where the design was “disclosed, but not described.” • The examination policy change appears to be in direct contradiction to the USPTO’s previously published examination guidelines. 24

25. USPTO DESIGN DAY 2013 DISCLOSED BUT NOT DESCRIBED? From Design Day 2013, More about the Written Description Requirement of 35 USC 112(a), Joel Sincavage 25

26. USPTO DESIGN DAY 2013 DISCLOSED BUT NOT DESCRIBED? Strap Fastener for Travel Goods ORIGINAL DESIGN AMENDED DESIGN • The amended design looks different from the original. • Nothing in the original design would lead one to recognize the amended design was also invented along with the original creation. From Design Day 2013, More about the Written Description Requirement of 35 USC 112(a), Joel Sincavage 26

27. USPTO DESIGN DAY 2013 DISCLOSED BUT NOT DESCRIBED? Baby Bottle Strap ORIGINAL DRAWNG AMENDED DRAWING • The design left over, after the amendment, was not recognizable prior to the amendment. • Does the description clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed? From Design Day 2013, More about the Written Description Requirement of 35 USC 112(a), Joel Sincavage 27

28. USPTO DESIGN DAY 2013 • Mr. Sincavage explained that there may be times that the USPTO will permit an amendment from solid lines to broken line, but that these amendments will only be permitted on a case-by-case basis and the applicant will need to make appropriate arguments in order to overcome a written description rejection. • Mr. Sincavage did not provide any examples of what an “appropriate” argument would be. • Based on this policy change, many pending applications may face significant examination issues. • Also, the continuation applications obtained by Apple likely would not have been allowed by the USPTO under this new policy. 28

29. PRACTICAL TIPS • Prepare and file numerous drawings covering every perceived possible embodiment of the design in the originally filed application. • This approach could result in the preparation and submission of 100 or more figures. • This approach would most likely meet the “described” requirement of the USPTO policy. • However, this approach would be very expensive and most likely cost-prohibitive for most applicants.  WAYS TO MEET THE DESCRIBED REQUIREMENT 29

30. PRACTICAL TIPS • By using the language “as shown and described,” in the claim, the MPEP notes that “a narrative description in the specification can supplement the drawing disclosure to define the scope of protection sought by the claim.” • The MPEP provides that both the drawing disclosure and any narrative description in the specification are incorporated into the claim. • While this language will not ultimately be printed on the issued design patent, it can serve as a basis for amendments to the initially filed drawings by pointing out what other embodiments are foreseen or can be used to identify alternative embodiments which can be later claimed. WAYS TO MEET THE DESCRIBED REQUIREMENT 30

31. PRACTICAL TIPS • For example, originally filed drawings show the entire design in solid lines, but language included in the specification, as originally filed, may state that “While the front face, bezel and back of the electronic device are illustrated, it should be appreciated that the front face may stand on its own merit, the bezel may stand on its own merit and the back may stand on its own merit, independent of the other elements.” • It is believed that broad language will likely not be acceptable in overcoming the description requirement. Only specific language pointing out features to be claimed or disclaimed in alternative embodiments would be sufficient to provide the applicant with the appropriate “case-by-case basis” arguments. WAYS TO MEET THE DESCRIBED REQUIREMENT 31

32. PRACTICAL TIPS • To protect alternative embodiments, multiple sets of perspective views, having broken lines to show embodiments that may later be claimed can be used to support later amendments or divisional applications. • A typical design application includes seven drawing views, namely, the front, rear, left side, right side, top, bottom, and perspective views. • When additional perspective view(s) are used, the applicant may be successful if wording describing what is claimed or disclaimed in the additional perspective view(s), along with a reference to the other figures in the primary embodiment, is utilized. • One, or possibly two, perspective view(s) may be used for each alternative embodiment. WAYS TO MEET THE DESCRIBED REQUIREMENT 32

33. PRACTICAL TIPS • For example, the applicant could state “Figure 8 illustrates an alternative perspective view of the electronic device shown in Figures 1-7, with the front face and back being disclaimed. Claimed aspects of Figures 1-6 (the front, rear, left side, right side, top and bottom views) are incorporated by reference into Figure 8, and any such features shown in broken lines in Figure 8, are likewise intended to be shown in broken lines in alternative Figures 1-6.” • Alternatively, the applicant could state “Figure 8 illustrates an alternative perspective view of the apparatus shown in Figures 1-7, with only the bezel being claimed. Claimed aspects of …” • This would provide applicants with options for amendments or later continuation application filings. WAYS TO MEET THE DESCRIBED REQUIREMENT 33

34. Thanks for your attention! Questions? DON STUDEBAKER STUDEBAKER BRACKETT PC 12700 SUNRISE VALLEY DRIVE SUITE 102 RESTON, VIRGINIA 20191 don.studebaker@sbpatentlaw.com 34