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June 18
Design Day 2018 Explores the Current State of Design Patents
Design Day 2018 at the United States Patent and Trademark Office (USPTO) provided a dynamic program that offered design patent examiners, practitioners, designers, and others the opportunity to learn about prevalent issues in the field of industrial design, as well as provided insight into the current state of the U.S. design patent system.

The event, which was held April 25 at the USPTO in Alexandria, Virginia, addressed a broad range of topics such as best practices, infringement via online sales platforms, and strengthening international design protection. INTA was one of the co-sponsors of the event.

Kicking off Design Day, Andrei Iancu, Director of the USPTO, articulated the importance of the design patent system—emphasizing that the inventor/designer of the Statue of Liberty obtained a design patent and leveraged the design rights to fund construction of the statue.

Karen Young, Director of TC 2900 (the Design Patent Group) at the USPTO, reviewed the current state of the USPTO’s design patent system, including:
  • The number of design patent examiners: 183, with 13 more to be hired this fiscal year (FY).
  • The total number of design applications filed this FY: 22,600.
  • The total number of design applications waiting on 1st action: 44,677.
  • The average pendency to receive a first action: 12.9 months.
  • The average total pendency: 19.2 months.

Providing insight into forthcoming changes at the USPTO, Courtney Stopp, Patent Examiner at the USPO’s Office of Policy and International Affairs, said that the agency is creating a system that will make priority documents electronically available to other design offices, similar to current priority application sharing systems for patent applications.


On an international front, Ms. Stopp discussed the goals of the ID5—an Industrial design framework comprised of the European Union Intellectual Property Office (EUIPO), the Japan Patent Office (JPO), the Korean Intellectual property office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the USPTO. These goals include normalization of grace periods, normalization of partial design protection, development of design protection for cutting-edge technologies such as artificial intelligence and virtual reality, and development of consistency in registration and examination policies and procedures.

Tomoki Sawai, the Director General of the JPO, presented on the state of the art of design patent examination in the JPO and projects underway to improve its systems.

Among the other sessions, a panel of patent examiners and practitioners discussed design patent prosecution best practices, including permissible and strategic application/claim title practice, and how to eliminate prior art rejections when prior art from the grace period is applied. For an on-the-ground look at design patents, guest speakers from four companies described their company’s use of design patents and the value of this form of intellectual property.

Sugarfina, LLC Co-Founders Rosie O’Neill and Josh Resnick presented on the evolution of the company and how its unique branding and product innovation has fostered its success. From a design perspective, they focused on the brand’s single unit packaging, and the label’s experience in creating a bento box-style packaging for selling multiple units. Sugarfina’s General Counsel Lance Miller provided examples of infringements that the company has seen. Qudus Olaniran, Patent Attorney at Microsoft Corporation, presented on the importance of good design, good design patent examination, and acquiring a robust design patent portfolio. He pointed to Microsoft’s Surface products, Xbox systems, computer mice, and other products to illustrate how good hardware design creates “cool” products, and to Graphical User Interface (GUI) designs for Windows, Office, and Xbox to show the importance of good screen-related designs.

Noting that design patents are becoming more important, Michael Blankstein, Deputy General Counsel, Intellectual Property at Scientific Games, explained how the company uses all forms of IP to protect designs on its gaming-related products, such as video slot machines and lottery tickets.

Lastly, Bill McKeone, Manager of Design - Kallista at Kohler Co., described the considerations that influence the company’s faucet and other bathroom product designs. He noted how Kohler designers track trends over years, and consider them in the development of their products.

Also on the program, an interactive panel looked at “Enforcing Design Rights for Infringing Internet Sales.” After an introduction that framed the current situation, including how infringers are getting “smarter” and the negative impact of infringement on businesses and society, several brand representatives provided insight into the infringements their companies are experiencing, whether and how they are enforcing their design rights, the on-line takedown process, and other challenges.

Other speakers also presented throughout Design Day 2018—all contributing to an enlightening and successful event. ​

Robert Katz (Banner & Witcoff), is Chair of INTA’s Design Committee.

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