Defending Design Patents | Patently-O

Guest put up by Professors Sarah Burstein (University of Oklahoma) and Saurabh Vishnubhakat (Texas A&M University).

In our new paper, The Reality About Design Patents, we debunk three commonly held—but incorrect—views about U.S. design and style patents. Taken with each other, these myths paint a grim photograph of design patents:

  • 50 percent of all design and style patent applications are turned down.
  • Most asserted design patents are invalidated in litigation.
  • Most litigated style patents are not located infringed.

By this account, design patents are difficult to get, hard to protect even if you do get them, and hard to recover on even if you do get and defend them. These beliefs are commonplace in the literature and generally invoked without having quotation. But, when we traced these assertions again, we observed an origin story of weak aid and misunderstood details.

In our paper, we provide much more present-day, transparent figures to substitute each myth that we debunk. Even so, we strongly warning versus about-decoding our results.

Exactly where do these myths occur from?

The origins of these claims lie in a few aged and misunderstood sources: a 1985 examine by Thomas Lindgren, a 1979 examine by the USPTO, and a 1953 analyze by Raymond Walter. The Lindgren research contributed to all three claims, whilst the USPTO and Walter scientific tests contributed largely to the 2nd claim—regarding regular invalidation in the course of litigation.

One particular significant issue with these scientific tests is that, as you can see from the summary over, they are all genuinely outdated. Walter’s facts preceded the passage of the Patent Act of 1952. Even although the most recent a person, the Lindgren review, was published in 1985, it only considers data by 1983. And the Federal Circuit hadn’t still made a decision its first style and design patent case at that stage. So these reports can’t explain to us considerably about what is likely on in the Federal Circuit period, unless of course 1 assumes—unreasonably—that the Federal Circuit didn’t meaningfully change design and style patent law.

We also located other issues with these scientific studies. For instance, Lindgren observed in his short article that his sample measurement was as well tiny to draw statistically sizeable conclusions. But his info was cited by other people, in citation networks we trace in a great deal additional depth in the paper, as if it were statistically substantial. What’s more, a 1999 paper mis-cited Lindgren for a assert that the 1985 review didn’t actually make, and that miscalculation is what hardened into the initially piece of standard knowledge mentioned earlier mentioned: that half of all layout patent apps are rejected.

What’s the authentic story?

Recognizing the greatest way to combat bad details is with superior information, we also provide corrections and updates to the report. The following findings about the present-day condition of affairs abide by the exact same sequence: attaining structure patents, defending them, and enforcing them.

Attaining Layout Patents

For practically the very last quarter-century, the success charge of style and design patent purposes appears to be to have been over 85%, not the 50% that Frenkel reported in 1999. (We notice that our results are consistent with what Professor Crouch discovered in his 2010 research of layout patent evaluation.)

Allowance of Design and style Apps as a Share of Complete Dispositions (1989–2020)

Allowance Fee of Structure Purposes as a Function of Whole Design Purposes Filed in the Very same Yr (1989–2020)

Our resource is the USPTO’s personal once-a-year reports going again to 1989, the oldest knowledge that is readily out there. This knowledge reveals that, because 1989, the apparent grant rate for design patents has stayed at or previously mentioned some 70%—whereas the quantity of design and style patent filings has quadrupled about the very same interval. By the mid-1990s, that level was virtually 80%.

But most normal structure apps (i.e., those people not filed by way of the Hague Procedure) are held confidential and unpublished except and right until they difficulty as patents. So how can we access this finding if application-level facts is all broadly unavailable? The USPTO yearly report information experiences a few totals related for us: (1) structure purposes newly submitted that yr, (2) structure purposes allowed that 12 months, and (3) style and design purposes deserted that calendar year. From this, we can infer the good results level of style applications. It’s not excellent but it’s the most effective we can do correct now.

Defending Design and style Patents

In the same way, our investigate did not aid the assertion that most litigated style patents are invalidated in the courts. In fact, the reverse is legitimate. For the period of time of 2008–2020, district courts building validity determinations about design and style patents upheld them (i.e., observed them “not invalid”) 88.4% of the time—and only 11.6% of these determinations resulted in a patent staying invalidated. Relatedly, more than the exact same time period, district courts generating enforceability determinations about style patents upheld them 99.5% of the time—and only .5% have been uncovered unenforceable. The total paper clarifies how we arrived at these figures, which are dependent on a review of almost 1200 case documents in U.S. district courts wherever a determination was manufactured about patent validity or enforceability.

(We notice that our conclusions are dependable with what Andrew Torrance identified in his 2012 review of style and design patent litigation. To some extent, our findings are even much more patentee-welcoming than the Torrance examine.)

We also appeared at style patent outcomes in the Worldwide Trade Commission and the UPSTO Patent Demo and Appeal Board. There were much less scenarios in these tribunals, but the information we located paints a picture that is much from grim.

For the period of 2011–2020, ITC determinations about validity upheld the patent 95% of the time and invalidated only 5%. Offered the comparatively little inhabitants of ITC style patent cases, we caution from powerful conclusions about strategic actions across tribunals as is often observed with utility patents. Nonetheless, the obtainable information does counsel that the ITC is not invalidating two-thirds of the style patents asserted there.

In the meantime, from when PTAB trial proceedings came on the web in 2012 via 2020, the survival price of design patents in these administrative trials has been 79%, reflecting a survival charge of 78% among the IPR instances and of 81% amid PGR instances. We refer to an over-all survival amount since patents can survive (1) when petitions complicated them are hardly ever instituted—i.e., taken up for evaluate by the PTAB—as properly as (2) when they are evaluated on the deserves and are uncovered not invalid. The over-all PTAB survival fee we report accounts for both.

Implementing Structure Patents

At last, our investigate did not aid the assertion that most litigated design and style patents are located not infringed:

Conclusions of Infringement as a Share of District-Court docket Layout Patent Infringement Findings (12-mo avg) (2011–2021)

Between district courtroom scenarios made the decision among 2011–2021, the share of selections in which the court identified infringement showed some volatility, but normally, the share of layout patent choices in which the court docket found infringement has remained almost entirely earlier mentioned 50% because 2011. Because 2015, the share of style patent choices in which the courtroom located infringement has remained above 80%.

Again, we warning towards more than-interpretation of these results. Our intention is to accurate the record and reorient a common wisdom that rests on an inaccurate and incomplete statistical photograph. Hence, we are acutely mindful of the danger in changing one particular mistaken look at with one more.

What will come upcoming?

A range of folks have called for adjustments to the design patent method, relying usually on the myths that we have now debunked. We hope that our paper will deliver far more light to these debates and, at a minimal, encourage extra fact-primarily based dialogue on these critical coverage concerns. We also connect with for more empirical exploration and for extra transparency of knowledge in this place. For case in point, we see no great purpose for the USPTO not to publish all style patent purposes. We know that the USPTO is certain by latest legislation, and we phone on Congress to reconsider that plan and to cease exempting design and style patents from the common publication specifications of 35 U.S.C. § 122.

Reasonable minds may vary over regardless of whether 18 months is the ideal time for publication as is the circumstance for utility patents, but there is no excellent reason—at least none we have nevertheless heard—to keep them key without end (until granted). Publishing these apps would not only supply a lot more data for investigate and coverage investigation but would also give transparency on the concern of how the USPTO handles applications for this significantly essential group of patents.

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Editors Notice: We call for disclosure of conflicts-of-curiosity for visitor posts, like the two economical desire and illustration of interested events.  Just one of the authors (Vishnubhakat) indicated an attenuated opportunity financial conflict in that he owns stocks in a range of businesses, which includes some tech organizations that keep utility and/or structure patents.

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