Design Patent Application and Case Flow
Design Patent Application
Design Patent Applications are filed at the United States Patent and Trademark Office (USPTO). Patent examiners evaluate the applications and issue office actions, including objections, rejections, and allowances. Allowances usually become issued design patents and are published weekly in the Official Gazette for Patents.
Examination
In general, an applicant may respond to non-final rejections and final rejections, and final rejections may be appealed to the Patent Trial and Appeal Board (PTAB). Decisions from the PTAB may be appealed to the United States Court of Appeals for the Federal Circuit (Federal Circuit). Decisions from the Federal Circuit may be appealed to the United States Supreme Court (Supreme Court).
Reexamination
Issued design patents may be challenged in an ex parte reexamination by either the patent owner, a third party (with or without an interest in the patent), or the director of the USPTO. A third party requestor is not allowed to participate and may remain anonymous. An ex parte reexamination is filed in the USPTO. A request for ex parte reexamination is granted when the request raises a substantial new question of patentability. An adverse decision on an ex parte reexamination may be appealed to the PTAB (and then to the Federal Circuit) or following an adverse decision by the PTAB, the applicant may have remedy to obtain patent by civil action against the Director in the United States District Court for the Eastern District of Virginia. An ex parte reexamination decision favorable to the patentee may not be appealed.
Supplemental Examination
A patentee may file at the USPTO a request for supplemental reexamination of an issued design patent at any time during the period of enforceability of the patent. If a substantial new question of patentability is found, an ex parte reexamination will be ordered. An adverse decision on an ex parte reexamination may be appealed to the PTAB.
Post Grant Review
Issued design patents may be challenged in a post grant review (PGR) by third parties that previously did not file a court action challenging patent validity. A PGR must be filed at the PTAB within nine months of patent issuance or reissuance. A patent may be challenged in a PGR based on any ground that may be raised under 35 U.S.C. § 282(b)(2) or (3) including patent subject matter eligibility or utility under 35 U.S.C. § 101, novelty under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, and enablement, written description, and definiteness under 35 U.S.C. § 112. A PGR petition is granted when it is determined that it is “more likely than not” that a challenged claim is unpatentable. A PGR decision may be appealed to the Federal Circuit.
Inter Partes Review
Issued design patents may be challenged by inter partes review (IPR) by third parties that previously did not file a court action challenging patent validity. An IPR may be filed at the PTAB after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a PGR is instituted, the termination of the PGR. An IPR may not be instituted if the request is filed more than one year after the requestor or a related party is served with an infringement complaint. An IPR is initiated when there is a “reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” An IPR is limited to challenges based on novelty and obviousness over previously unconsidered patents and printed publications.
Reissue
A petition for reissue may be filed by the patent owner at the USPTO anytime before the patent expires. An adverse decision may be appealed to the PTAB.
Correction
A petition for correction may be filed by the patent owner at the USPTO.
Patent Enforcement
Issued design patents may be enforced by filing a civil action in United States District Court (District Court) and at the International Trade Commission (ITC). Issued design patents may be challenged by filing a declaratory judgment or counterclaim in District Court or by filing a counterclaim at the ITC.
Where Filed
USPTO: Design Patent Applications, Ex Parte Reexaminations, Supplemental Examinations, Reissues, and Corrections.
PTAB: Post Grant Reviews, Inter Partes Reviews, and Appeals of Examinations, Reexaminations, and Reissues.
Federal Circuit: Appeal of PTAB Decisions.
Supreme Court: Appeal of Federal Circuit Decisions.