Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016...

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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 20 th Annual Meeting and Conference

Transcript of Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016...

Page 1: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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

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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

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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.

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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).

Page 5: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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

Page 6: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

Excellence in Work Products – Examiner’s Challenge

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Examiner’s concerns

and challenges.

Design patent quality

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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:

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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

Page 9: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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

Page 10: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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%.

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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:

Page 17: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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:

Page 25: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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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:

Page 27: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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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:

Page 28: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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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?

Page 29: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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Excellence in Work Products – Examiner’s Challenge

Examiners are concerned with:

Should this

requirement

be made at

allowance?

Page 30: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence

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Questions

Excellence in Work Products – Examiner’s Challenge

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Thank You

Excellence in Work Products – Examiner’s Challenge

Page 32: Design Patent Quality - MemberClicks design... · 2018-02-14 · Design Patent Quality 7/28/2016 Design Patent Quality 2 USPTO’s Enhanced Patent Quality Initiative Pillar 1 - Excellence