How the AIA Affects Design Patents

On this blog, we’ve discussed how the America Invents Act (AIA) increases the importance of an early filing date through a provisional patent application, which you can obtain through PatentFiler, the online service of Cislo & Thomas LLP (you can read more about that here). However, some of our clients who file design (not utility) patents, for which provisional patent applications are not available, may be wondering if the new laws affect them, as well. Today’s post is dedicated to outlining some of the changes regarding design patents.

1.Design patent applications are evaluated under a “first-inventor-to-file” system. We do not yet know how the U. S. Patent and Trademark Office (USPTO) implementation the AIA’s “first-inventor-to-file” practice will look in detail, but inaction on the part of a company can be potentially costly under this provision. If you wait to decide whether or not to protect your invention, you expose yourself to the possibility of losing your rights if a competitor files first.

2.The scope of prior art has been expanded. Disclosures now include presentations at trade shows, postings on websites and even social media. Ensure that every public disclosure of a new design is preceded by a design patent application.

3.Applicants can institute derivation proceedings if they believe their design was stolen by an earlier applicant.

4.The AIA subjects issued design patents to new post-grant proceedings, including Inter Partes Review (IPR) and Post-Grant Review (PGR). These proceedings can now be used to challenge the validity of a design patent and serves as a lower-cost alternative to litigation.

For the most part, the AIA applies equally to utility and design patents, therefore these points are not necessarily exclusive to design patents. We can’t know exactly how all these changes will be implemented by the USPTO in practice, but it is likely that design patent applications will be the first ones to be examined under this new framework since design patents are usually examined more quickly than utility patents. Along those lines, design patents are likely to be the first ones to be challenged under the new Post-Grant Review proceedings.

The attorneys at Cislo & Thomas LLP understand the value of design patents and the impact the AIA has on them. Our team has the skills and experience to manage your design patent applications under the AIA. For more information, please contact us at 310 451 0647 or schedule a consultation online.