Post Grant Proceedings of
Design Patents: A Look Back
and to the Future
Tracy-Gene G. Durkin, Esq.
USPTO Design Day
April 24, 2013
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Types of Post Grant Proceedings of
Design Patents (Pre-AIA)
Ex Parte Reexamination
-
Created by Congress in 1980
Provide a quality check on issued patents reexamined in
view of new patents and printed publications
Can be filed anonymously or by patent owner
Inter Partes Reexamination
2
Created by Congress in 1999
Provide a fast, low-cost, effective alternative to district court
litigation
Ineligible if patent filed before Nov. 29, 1999
Must disclose “real party in interest”
Requester cannot be in privity with patent owner
No longer available, but cases remain pending
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Types of Post Grant Review of Design Patents
(Post-AIA)
• Ex Parte Reexam
• Inter Partes Review
– Created by the AIA and available Sept. 16, 2012
– Adjudicated by Patent Trial and Appeal Board
– Can be used against any patent at any time (for
now, until PGR is available)
– Can’t be filed by patent owner
– Limited discovery (documents and depositions of
declarants)
– One involving design filed December 2012
• Post Grant Review (only FITF patents)
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Ex Parte and Inter Partes Reexaminations of
both Utility and Design Patents
between 2005 and 2010
800
700
600
Requests Filed
500
400
300
200
100
0
FY 2005
FY 2006
FY 2007
FY 2008
FY 2009
Ex Parte
524
511
643
680
658
Inter Partes
59
70
126
168
258
USPTO Fiscal Year
4
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Ex Parte and Inter Partes reexams by
Discipline through 2010
Annual Ex Parte Request Filings
Design Patents, 166,
2%
Annual Inter Partes Request Filings
Design Patents, 12, 1%
Chemical Operation,
158, 20%
Chemical Operation,
2959, 28%
Mechanical Operation,
3600, 35%
Electrical Operation,
3686, 35%
*Cumulative Since July 1, 1981
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Mechanical Operation,
253, 31%
Electrical Operation,
385, 48%
*Cumulative Since November 29, 1999
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Design Patents Involved in Reexamination
by Class between 2005 and 2010
Tools and hardware, 14, 15%
Others Combined, 28, 30%
Furnishings, 8, 8%
Production, Distribution, or
Transformation of Energy, 7,
7%
Recording, Communication,
or Information Retrieval, 4,
4%
Micellaneous Machines, 4,
4%
Lighting, 4, 4%
Food and Drink Equipment,
4, 4%
Construction Elements, 6, 6%
Heating, Cooling, Fluid
Handling, and Sanitary
Equipment, 6, 6%
Transportation, 6, 6%
Travel Goods and Personal
Belongings, 6, 6%
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© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Ex Parte and Inter Partes Design Patent
Reexamination Request Filings (1999-2009)
20
18
16
14
12
10
8
6
4
2
0
7
CY 1999 CY 2000 CY 2001
CY 2002 CY 2003 CY 2004 CY 2005 CY 2006 CY 2007
CY 2008 CY 2009
Inter Partes Request
0
0
0
0
0
1
4
1
5
0
1
Ex Parte Request
9
7
3
8
9
6
8
2
14
13
6
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
More Than 80% of Design Patent Reexams
filed between 2005 and 2010 were Initiated
by Third-Party Requesters
Design Patent Reexaminations by Initiating Party
Commissioner Ordered, 3,
3%
- 78% of ex parte requests
initiated by a third-party
Owner Initiated, 16, 16%
Known Third-Party, 56, 58%
Anonymous Third-Party,
22, 23%
Clear majority are thirdparty initiated
- only 19% by initiated by
patent owner
- As compared to utility
patents where 63% are
third-party initiated and
35% are owner initiated
8
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Outcome: Slightly More than 50% Chance the
Claim will be Cancelled
Combined Ex Parte and Inter Partes
DPR NIRC Claim Outcome Analysis
Sole Claim
Cancelled
None Added
, 31, 52%
Sole Claim
Confirmed
Unamended,
29, 48%
High rate of cancellation
as compared to utility
- Of the 97 design patent
reexaminations, 60 had
been concluded as of the
2010 study
- Of those 60 concluded
proceedings, 29 (or 48%)
emerged confirmed and
unamended and 31 (or
52%) were cancelled
9
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Deeper Dive into Proceedings
Filed From January 2010 to now
• 31 filed (22 EXP, 8 IPX, 1 IPR)
– 4 by patent owner
– 27 by third party (5 anonymously)
• Co-pending litigation: 58% no pending litigation; 42 %
with co-pending litigation
• 27 of 31 requests were granted
– 2 requests were denied; 2 have decision pending
• Diverse technology areas
– furnishings 19%
– 11 others 4 – 8%
10
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Deeper Dive: Rejections
• 8 cases with rejections:
– 1 rejected under 102
– 7 rejected under 103 (often based on
patentee’s own art)
– 4 had new art asserted by Examiner
• Of all granted requests (rejections/SNQ/RLP)
– 13 based on utility patent prior art
– 15 based on design patent
– 20 non-patent literature
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© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Deeper Dive: Examination
• All but IPRs are handled in Group 2900 by a new
examiner (not by Central Reexam Unit)
– Melanie Tung: 4
– Deanna Fluegeman: 3
– Adir Aronovich: 3
– Catherine Tuttle: 3
– 12 other examiners have the rest
• Interviews are rare (only 3 during this period)
• Reasons for allowance provided in all cases
(some textual only; some which incorporated
annotated patent figures)
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© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Deeper Dive: Outcomes
• Of the 31 proceedings bewteen 2010 and
today:
– 2 claim cancelled
– 14 pending, with claim rejected or SNQ/RLP
found
– 9 claim confirmed
– 2 pending, claim confirmed
– 2 Request denied
– 2 pending, no decision on Request/Petition
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© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Outcome Since January 1999: More than 50%
Chance the Claim will be Confirmed
Combined Ex Parte and
Inter Partes Design Patent
Claim Outcome Analysis
Sole Claim
Sole Claim
Confirmed, 45, Cancelled, 40,
47%
53%
14
- Of the 127 post-grant
design proceedings filed,
85 were instituted and are
concluded
- Of those 85 concluded
proceedings, 45 (or 53%)
emerged confirmed and
un-amended and 40 (or
47%) were cancelled
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Will We See an Increase in Post Grant
Proceedings of Design Patents?
1. Effective defense strategy for accused infringers where remedy may
be infringer’s profit
2. Post AIA even more qualifying prior art including printed publications
of offers for sale and public uses that otherwise would not qualify
(low hurdle for enablement)
3. Slightly less than 50% chance of success for third-party requestors
with a likely “all or nothing” outcome
4. Increase in Design Filings and Low Rejection Rate (81% allowed on
first action, 1.2% rejected over prior art)*
* "Design Patent Rejections" by Dennis Crouch (Patently O' Blog, Jan 19, 2010)
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Thank You
Questions?
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