Post on 27-Jul-2020
Design Patent Quality Examiner’s Perspective
Joel Sincavage
Design Practice Specialist,
Tech Center 2900 July 28, 2016
Design Patent Quality 7/28/2016
NAPP’s 20th Annual Meeting and Conference
Design Patent Quality
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USPTO’s Enhanced Patent Quality Initiative
Pillar 1 - Excellence in Work Products Provide the best work products and services at every
stage of the patent process
Pillar 2 - Excellence in Measuring Patent Quality
Provide excellence in measuring patent quality, ensuring appropriate quality metrics target examination issues
requiring attention
Pillar 3 - Excellence in Customer Service
Improve customer experience with an emphasis on customer service
Design Patent Quality
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USPTO’s Enhanced Patent Quality Initiative
Design Patent Publication Quality
The Design Patent Publication Quality program is
investigating the feasibility of improving the image quality of
published design patents. Degradation of finally printed
patent grant images, relative to their incoming patent
application images, is significant in design patents especially because the drawings define the claimed invention.
Degradation of these images in the printed patent can have significant impact on our external stakeholders.
The Design Patent Publication Quality program is
investigating the feasibility of improving the image quality
of published design patents. Degradation of finally printed
patent grant images, relative to their incoming patent
application images, is significant in design patents especially because the drawings define the claimed invention.
Degradation of these images in the printed patent can have significant impact on our external stakeholders.
Design Patent Quality
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USPTO’s Enhanced Patent Quality Initiative
Design Patent Publication Quality
By October of this year we expect to
begin seeing design patent grants with
image quality equivalent to the images
that were filed.
A copy of the grant will be available on
Supplemental Content tab in Public PAIR
(Patent Application Information Retrieval).
Design Patent Quality
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USPTO’s Enhanced Patent Quality Initiative
Pillar 1 - Excellence in Work Products Provide the best work products and services at every
stage of the patent process
Pillar 2 - Excellence in Measuring Patent Quality
Provide excellence in measuring patent quality, ensuring appropriate quality metrics target examination issues
requiring attention
Pillar 3 - Excellence in Customer Service
Improve customer experience with an emphasis on customer service
Excellence in Work Products – Examiner’s Challenge
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Examiner’s concerns
and challenges.
Design patent quality
Excellence in Work Products – Examiner’s Challenge
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Am I paying the right amount
of time and attention to the
right things?
Examiners are concerned with:
Excellence in Work Products – Examiner’s Challenge
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What are “the right things?”
Examiners are concerned with:
Definiteness
Enablement
Ornamentality
Planning a search
Searching
Quayle Actions
Prior art rejections
New matter
Restrictions
Reissues
Compact Prosecution
Finals
Case law
Patentability
Affidavits & Declarations
Clear & Compete Record
Applicant Responses
Allowances
Excellence in Work Products – Examiner’s Challenge
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Am I doing the right amount of work?
Examiners are concerned with:
110% or above Outstanding
103% ‐ 109% Commendable
95% ‐ 102% Fully Successful
88% ‐ 94% Marginal
below 88% Unacceptable
Excellence in Work Products – Examiner’s Challenge
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Is my quality good enough?
Examiners are concerned with:
Outstanding – The error rate is 0% ‐ 4.49%.
Commendable – The error rate is 4.50% ‐5.49%.
Fully Successful – The error rate is 5.50% ‐ 6.49%.
Marginal – The error rate is 6.50% ‐ 7.49%.
Unacceptable – The error rate is greater than or equal to 7.50%.
Excellence in Work Products – Examiner’s Challenge
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How can I do:
Outstanding quality work and
Outstanding production?
Examiners are concerned with:
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The rich number of resources presents
a challenging search.
• U.S. Design patents
• U.S. Utility patents and Publications
• Foreign Utility patents, EPO, JPO, Derwent
• Non-patent literature
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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The rich number of resources presents a
challenging search.
Designs from 42 countries and issuing authorities
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Have I searched enough?
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Quality & Quantity
Depending on the subject matter,
the best search falls between an exhaustive
search and an adequate search.
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Clarity in the drawings
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
Excellence in Work Products – Examiner’s Challenge
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During prosecution, applicant has an
opportunity and a duty to amend ambiguous
claims to clearly and precisely define the
metes and bounds of the claimed invention.
See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d
1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc).
Examiners are concerned with Drawing clarity:
During prosecution, applicant has an
opportunity and a duty to amend ambiguous
claims to clearly and precisely define the
metes and bounds of the claimed invention.
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Examiners are concerned with Drawing clarity:
Excellence in Work Products – Examiner’s Challenge
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Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with Drawing clarity:
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Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with Drawing clarity:
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Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with Drawing clarity:
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What about objections?
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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If a description is not correct but we know what
is meant, should we require correction?
E.g.: Fig. 8 is partially enlarged view of Fig 2.
Crx: Fig. 8 is a detail view of Fig 2.
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Pillar 3 - Excellence in Customer Service
Improve customer experience with an
emphasis on customer service
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Productive interviews
Emphasis upon including the
substance of interviews in the record
In 2016 design examiners logged 1,511 of
hours in applicant interviews.
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Should I allow the application
with requirements to correct
the drawings?
Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
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Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
Convert the lines in the
bottom view to broken lines.
Should these
requirements
be made at
allowance?
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Excellence in Work Products – Examiner’s Challenge
Examiners are concerned with:
Should this
requirement
be made at
allowance?
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Questions
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Thank You
Excellence in Work Products – Examiner’s Challenge