Recap of USPTO’s Design Day 2019
Thursday, April 25, 2019, was Design Day at the U.S. Patent and Trademark Office. The event was hosted at the USPTO’s Alexandria campus, while other regional offices of the USPTO provided opportunities for local examiners and practitioners to attend the meeting remotely. The relaxed tone and casual atmosphere of Design Day, combined with lively presenters addressing a broad range of topics, made for a fun and informative program. Each presenter was introduced with a fun fact, which kept the audience laughing and engaged. Hosts Lakiya Rogers, a Supervisory Patent Examiner in TC 2900, and Elizabeth Ferrill, a partner at Finnegan, kept the day moving between funny anecdotes and useful information.
Karen Young, Director of TC 2900 at the USPTO
Commissioner for Patents, Drew Hirshfeld, kicked off the event with a welcome address, followed by Director Karen Young’s update on the current state of the Design Technology Center. Director Young indicated that Group 2900 added more Supervisory Primary Examiners over the past year and would soon be hiring more junior examiners.
Changes in international design practice, including new protections offered in Singapore, changes in grace periods in Japan (now 12 months), China’s consideration of partial designs, the availability of WIPO’s Digital Access Service (DAS) for priority documents in design applications, and Canada’s shift from 10 years to 15 years of design protection were highlighted by David Gerk of the USPTO Office of Policy and International Affairs and the Canadian Intellectual Property Office’s Todd Hunter.
One of the topics of discussion of the day was the recently issued Federal Circuit decision In re Maatita. Justin DeAngelis, an associate at Quarles & Brady, summarized the Federal Circuit’s decision and shared his thoughts on how the decision could be used to advance prosecution in design cases. William LaMarca of the Office of the Solicitor then shared his personal account of arguing In re Maatita on behalf of the USPTO. He provided useful insight into the issues and explained the factors that the Solicitor’s Office considers when undertaking a case.
Kate Eary of Gentex Corporation discussed the 125-year history of the company and explained how design has played a role in the company’s focus on helmet design for our military forces. It was interesting to find that Gentex’s helmets are popular not only with armed forces supply procurement but also with designers of video games and movie producers.
Dana Weiland, an examiner in Art Unit 2919, provided an example of the type of prior art search examiners conduct when considering a design patent application. She shared views of her desktop during such a search and how examiners can organize their references before drafting an office action. Dana’s presentation was very helpful to better understand the search and examination process examiners undertake when considering prior art in view of a new design patent application.
Honorable Jill Hill discussing her view from the bench
The Honorable Jill Hill presented her view from the bench. Judge Hill has been an administrative patent judge at the USPTO Patent Trial and Appeal Board for over 6 years. During her presentation, she provided recommendations and hints for strong brief drafting. Among her suggestions, Judge Hill indicated that it is important to argue the examiner’s proposed combination of references and not only the references separately; she also referenced the importance of including the “A” in “IRAC,” reminding the audience that the PTAB needs to see the analysis in writing, and finally, Judge Hill emphasized that the Board values the reproduction of annotated drawings and the use of arrows to identify an element in a reference drawing that is being used to correspond to a particular component in the appellant’s design claim.
In-house perspective panelist: Blake Nickles, Daniel Spillman, and Jeff Watson (left to right) with moderator Christopher George
A panel of in-house counsel provided a captivating discussion regarding design patent portfolio management. Christopher George led the panel discussion, which had the audience laughing when the panelists discussed the difficulties that can arise when working with inventors.
Jenae Gureff provide an overview of recent PTAB decisions in the design arena, and Sydney English concluded the conference with a review of District Court Decisions.
The day’s keynote speaker, Sara Brooks of IBM Corp., discussed the evolution of design within IBM, noting that design was a large focus of the company in the 1950s and 1960s and has again become a focus in the twenty-first century. Perhaps the most profound statement of the day came from Ms. Brooks when she said: “good design is good business.” This point captured the essence of the USPTO Design Day — that a good design can lead to strong design patents, which in turn can lead to a robust business, thus highlighting the significance of securing good patent protection on designs.