November 2023

In a move to address the evolving landscape of digital designs and emerging technologies, the United States Patent and Trademark Office (USPTO) has recently issued supplemental guidance for its personnel in evaluating design patent claims involving computer-generated electronic images (https://www.federalregister.gov/documents/2023/11/17/2023-25473/supplemental-guidance-for-examination-of-design-patent-applications-related-to-computer-generated). This guidance, effective as of November 17, 2023, aims to provide clarity on the eligibility criteria for design patent protection in the realm of computer-generated images.

The genesis of this guidance can be traced back to the USPTO’s request for public input in December 2020, seeking opinions on the interpretation of the article of manufacture requirement in the United States Code. Acknowledging the rapidly advancing digital era, the USPTO has recognized the need for nuanced guidance to ensure robust and reliable patents for designs that encompass new technologies.

The guidance emphasizes adherence to the article of manufacture requirement outlined in 35 U.S.C. 171, encompassing designs for surface indicia, the shape or configuration of an article, or a combination thereof. A pivotal focus lies on computer-generated icons (commonly referred to as “computer icons”) and graphical user interfaces (GUIs), with the condition that they must be integral and active components in the operation of a programmed computer.

Crucial Takeaways for Patent Applicants:

Functional Integration: Design patent claims for computer-generated images should highlight their role as integral and active components in a computer’s operation, going beyond mere display.

Claim Language: Titles and claims should not solely focus on the computer icon or GUI but should explicitly mention the article of manufacture, such as a “display panel with computer icon.”

Review Criteria: USPTO personnel are instructed to thoroughly review titles, claim language, and drawings to ascertain compliance with the article of manufacture requirement.

Examples for Clarity: The guidance provides practical examples illustrating compliant and non-compliant design claims, offering patent applicants a clearer understanding of the USPTO’s expectations.

Public Engagement and Feedback: Recognizing the significance of public input, the USPTO actively invites comments on the supplemental guidance. This inclusive approach reflects the agency’s commitment to ensuring a fair, efficient, and effective intellectual property ecosystem.

As a firm with a substantial cutting-edge design practice, McCoy Russell has the experience and technical expertise to ensure adherence to the USPTO’s shifting policies as the digital landscape continues to shape the future of innovation. Patent applicants and practitioners at the firm are encouraged to engage with this guidance to enhance their understanding of the evolving standards in intellectual property law.

The United States Patent and Trademark Office (USPTO) has ushered in a new era for intellectual property practitioners with the introduction of the Design Patent Practitioner Bar. This significant development, outlined in the final rule published by the USPTO, aims to enhance the quality of representation in design patent matters while accommodating the dynamic landscape of technological advancements.

The traditional patent bar has long been the standard for practitioners handling utility, plant, and design patents. However, recognizing the distinct nature of design patents, the USPTO has created a separate bar to cater specifically to practitioners specializing in design patent proceedings.

Expanded Admission Criteria:
The design patent practitioner bar brings with it expanded admission criteria, allowing individuals with degrees in industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education to qualify. This inclusivity aims to encourage broader participation and bring practitioners with diverse backgrounds and expertise into the fold.

Public Input and Support:
Before implementing this groundbreaking change, the USPTO sought public input to gauge the industry’s perspective on the creation of a design patent practitioner bar. The response was overwhelmingly supportive, with numerous comments highlighting the potential benefits.
Supporters of the design patent practitioner bar argue that it will align the criteria for practitioners with those of design patent examiners, ultimately improving the quality of representation. Additionally, it is anticipated to increase opportunities for under-represented groups, lower costs, and ensure consistent, high-quality design patents.

Implementation Details:
Admitted design patent practitioners will be limited to practicing in design patent matters only, ensuring a specialized focus on this unique area of intellectual property law. However, it is crucial to note that existing patent practitioners remain unaffected, and the criteria for admission to the patent bar for utility and plant patents remain unchanged.

The introduction of the Design Patent Practitioner Bar marks a pivotal moment in intellectual property law, addressing the distinctive nature of design patents and providing a platform for practitioners to specialize in this field. As the legal landscape continues to evolve, this forward-thinking initiative by the USPTO not only improves the quality of representation but also fosters diversity and innovation in the practice of design patent law.

As a proactive firm, with a specialty practice for designs, McCoy Russell is adapting its practice in lieu of these changes and ensuring the firm’s practitioners are well-equipped to navigate the intricacies of design patents. Embracing this shift will not only enhance the firm’s capabilities but also position it at the forefront of the evolving intellectual property landscape.

McCoy Russell congratulates Steven Ochs and Goose Cube Studio on their interactive art installation “The Portal”. The unique home-base exhibition, “The Portal” is an immersive installation that creates the illusion of a boundless space to explore, get lost in, and emerge transformed.

McCoy Russell congratulates Steven Ochs for his innovative nature of this new model of experimental and immersive art.

In our last post, McCoy Russell discussed the impact of the change in Japanese Patent Law as to Multiple-Multiple Dependent Claims prohibition. This change has prompted many to reconsider their approach to drafting patent applications.

In light of this change, patent applicants need to be aware of the new regulations and make the necessary adjustments in their patent drafting processes. Patent applicants need to be diligent when drafting their applications. To avoid any issues, they should thoroughly review their claims and ensure that they do not include multiple-multiple dependent claims. Such claims can result in immediate rejection, causing delays and complications in the patent application process.

Patent applicants and practitioners need to adapt to these changes and refrain from using such claims in applications filed on or after April 1, 2022. One such approach taken by McCoy Russell involves explicit support for both singly dependent and multiple dependent claims in the original application, whether it’s a US or foreign filing. This approach can help applicants maintain flexibility and mitigate the risk of losing priority when seeking patent protection in various jurisdictions.

Explicit support for both singly dependent and multiple dependent claims in the original application offers several advantages:

• Global Applicability: By including explicit support for both types of dependent claims, applicants create patent applications that are versatile and adaptable to different jurisdictions, including Japan.
• Priority Preservation: This approach safeguards against the loss of priority when transitioning from one jurisdiction to another. With well-supported dependent claims, patent applicants can ensure that their rights are protected consistently across the board.
• Streamlined Application Process: Explicitly supporting both types of dependent claims from the outset simplifies the process of adapting the application to meet the specific requirements of different patent offices.
• Cost-Efficiency: Eliminating the need for excessive claim amendments or additional fees to rectify issues related to multiple-multiple dependent claims can result in cost savings for patent applicants.

The recent changes in Japanese patent law have altered the landscape of patent applications in the country. McCoy Russell takes a proactive approach and can navigate these changes successfully for its clients. Contact us if you think McCoy Russell can be of assistance.

In our last post, McCoy Russell discussed changes in Japanese Patent Law as to Multiple-Multiple Dependent Claims being prohibited. To understand the implications of this change, it’s crucial to first understand what multiple-multiple dependent claims are.

In patent drafting, claims are used to define the scope and protection of the invention. A dependent claim refers to a claim that refers back to a previous claim, specifying additional limitations or features. Multiple-dependent claims are those that refer to multiple preceding claims, combining their limitations in a single claim. And, “multiple-multiple dependent” claims take this a step further, referring to multiple claims that themselves refer to multiple other claims.

The impact of this change is far-reaching, particularly for patent applicants who are accustomed to using multiple-multiple dependent claims to streamline their applications. With the ban in place, it is no longer possible to seek a reduction in the number of claims through the use of these claims in applications filed after April 1, 2022. This change has implications for both PCT applications and Paris route applications filed in Japan.

It’s important to note that the ban on multiple-multiple dependent claims does not extend to regular multiple dependent claims. These can still be included in patent applications without incurring any additional official fees. However, the prohibition serves as a clear signal that patent applicants should refrain from relying on multiple-multiple dependent claims as a means of simplifying their applications.

Working with a patent professional can help ensure applications are to the standards of the office in the jurisdiction which they are seeking protections in. Our next post covers one approach that may be used to address the change in Japanese Patent Law.

Recent changes in Japanese patent law have introduced significant restrictions on the drafting of patent claims. In Japan, much like in the United States and other jurisdictions (except EP), a significant modification in patent claim drafting has been implemented, which has brought an end to the practice of using “multiple-multiple dependent” claims. This change is important for patent applicants and practitioners to understand, as it affects the strategy of preparing claims in both PCT (Patent Cooperation Treaty) applications and Paris route applications in Japan.

The change in Japanese patent law pertains to the prohibition of “multiple-multiple dependent” claims, a practice that was previously allowed. Applications with an effective filing date as of April 1, 2022, international filing date for PCT applications and the Convention priority date for Paris route applications specifically, cannot include multiple-multiple dependent claims. This is a significant shift, as applications that contain such claims will be rejected solely on this ground.

In our next post, McCoy Russell will discuss what multiple-multiple dependent claims are and the impact on patent filings.