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Design Patent Rejections – Update

Foreword: To date, the BigPatentData Blog has given little no attention to design patents. This is because I barely know the difference between a design patent and a trademark. My good friend Dunstan H. Barnes, however, is an expert in design patents. I am therefor honored to have him as my first guest poster here to finally show some love to the design patent crowd. –Chad 

Today’s post will be the first in a three-part series of posts that follow on from Dennis Crouch’s January 2010 post on Design Patent Rejections. In this first post, we have set out to recreate and update Dennis Crouch’s January 2010 study by looking through the file histories of approximately 1,750 recently-issued US design patents. In my second guest post, we will look at certain other statistics collected while conducting this updated analysis (such as objections received, numbers of embodiments included, and any differences in rejections/objections between Hague and non-Hague filings). Finally, in my third guest post, we will include USPTO data regarding abandoned design applications in an effort to get a better estimate of the true number of design patent applications that go “straight through” from filing to issuance without receiving any office actions.

Based on our reviewed sample[1], the USPTO is issuing more rejections than it was in 2010. Although it remains true that the majority of design patents are continuing to issue without receiving any office actions, the number has dropped to 70.7% (from 81.6% in Dennis Crouch’s January 2010 study). Section 112 rejections remain by far the most common type of rejection, and were seen during prosecution in 25.6% of issued design patents (note that this number includes rejections that were made on multiple statutory grounds, as shown in the pie chart). Prior art rejections (based on either or both of Sections 102 and 103) were seen during prosecution in 2.1% of issued design patents. Section 171 rejections were seen during prosecution in 2.9% of issued design patents—the Section 171 rejections break down into 2.5% being based on statutory double patenting and 0.4% being based on non-statutory subject matter rejections. While there were multiple statutory grounds raised in 0.15% of issued design patents, the overlap tended to be Section 112 plus something else (e.g., Section 112 plus either or both of Section 102 and 103, referred to in the pie chart as “Prior Art + Sec. 112”). None of the design patents reviewed contained a rejection on all four of Sections 102, 103, 112, and 171 (or even Section 171 plus either of Section 102 or 103).

 

The table below shows a numerical comparison between the statistics reported in Dennis Crouch’s January 2010 study and those of the present study. The percentage in the present study adds up to 101.3% due to overlapping statutory rejections; this likely also applies to the statistics reported in Dennis Crouch’s January 2010 study (which add up to 101%).

Rejection TypeDennis Crouch
Jan. 2010 study
This Study
(Oct & Nov 2017)
Change
No Rejections81.6%70.7%-10.9%
Section 11213.9%25.6%+11.7%
Section 102 + Section 103 (prior art rejections)1.2%2.1%+0.9%
Section 171 (statutory double patenting)3.7%2.5%-1.2%
Section 171 (non-statutory subject matter)0.6%0.4%-0.2%

Similar to Dennis Crouch’s January 2010 study, this current data set does not account for design patent applications that were abandoned during prosecution. We will attempt to address this issue in the forthcoming third guest post.

Finally, a big thank you to the following individuals: Christopher V. Carani and Philipp Ruben for their assistance in setting up the present study; Philip Brown, Amber Carpenter, Collin Hansen, Michael James, Donna Kwon, Alan Montera, Autumn Schmidt, and Sean Sparrow, who were each instrumental in collecting data for the present study—Sean in particular deserves a special mention for his tireless work digging into the statistical analysis; and Chad Gilles for hosting this and the forthcoming guest posts.

[1] The 1,746 design patents reviewed in the present study issued between October 17, 2017 and November 7, 2017.

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