Pritzker’s pro-patent reform push should include designs
Commerce Secretary Penny Pritzker believes reforms are needed to rein in costly litigation in the U.S. patent system, adding in recent public remarks that “the president gets it,” as well:
He recently announced new executive actions which will increase transparency in patent ownership, provide more training to patent examiners, and help inventors and small business owners who unexpectedly find themselves facing litigation.
We can’t stop there. The administration supports legislation to build on the success of the Leahy-Smith America Invents Act of 2011. Specifically, we are calling for Congress to pass reforms that will enhance competition and tech transfer, reduce abusive tactics by shadowy shell companies, help ensure that courtroom cases do not unfairly hurt main street and put downward pressure on litigation costs.
Unfortunately, even though Pritzker’s comments came in the context of a ceremony to honor the U.S. Patent and Trademark Office issuing its 700,000th design patent, she didn’t take much notice of the fact that the design patent system is in need of some serious reforms of its own.
Long considered the backwater of the intellectual property field, design patents differ from utility patents in that they cover the non-functional appearance — shape, color, texture, ornamentation, etc. — of various consumer and industrial products. They are notable for having a speedy time from filing to approval (typically less than one year) but they remain in effect for a shorter 14-year term.
In part because of the role they have played in some recent high-profile legal disputes, design patents are now the subject of renewed attention. And for good reason, as both design patent filings and grants have spiked in the past decade. According to the Intellectual Property Owners Association’s 2013 IP Record, there were 658 more design patents filed in 2012 than in 2011.
One side effect of design patents having subsisted so long in the hinterlands of intellectual property law is that, on those occasions when Congress has moved to update and reform patents, it has tended to neglect addressing design patent law. Among the most notable oversights is that, while utility patents are now subject to a fairly transparent process of publication and review (generally taking place 18 months after they are filed) design patents do not have a parallel system. Instead, we have a system that works much as Pritzker described it in her talk on the USPTO’s 700,000th design patent:
About two years ago, a new patent application was assigned to Barbara from a company called Leapfrog, based in Emeryville, Calif…This particular design patent application was to protect the unique look, feel, and appearance of a product called Leapster Explorer , which contains 40 learning and playing experiences for 4-to-9-year-olds…Barbara researched to make sure the design was truly unique. She also ensured that the application was high-quality, and then she approved the patent. As a result, this patent will help protect and strengthen the visual and physical identity that Leapfrog has worked so hard to build.
You can see a photo of the specific design that earned Leapfrog this landmark patent at the top of this post. I’d leave to individual judgment — or rather, in the terminology of design patents, to the view of the “ordinary observer” — the degree to which this represents a unique and non-obvious design, as opposed to one that is “substantially similar” to a variety of portable electronic gaming consoles from the early 1990s.
Indeed, that is precisely the problem. Whereas the utility patent application process allows for public input and vetting of patent filings, design patent applications are held as confidential until the point when the USPTO issues them. This requires Barbara the patent inspector to do a ton of research that could otherwise be be accomplished (or at least, significantly supplemented) through public input. It also raises the odds that USPTO will get it wrong, approving design patents that are overly broad, that cover trivial elements or that are filed for obscure purposes.
That the White House has taken an interest in patent reform is certainly a major step forward. But getting lawmakers in both the executive and legislative branches to take design patent reform seriously is the big leap that still needs to be made.
