Obviousness proves to be tricky for partial product designs. After the Federal Circuit's ruling, what is the future of secondary considerations? And will the guidance on primary references make it harder to obtain design patents?

 

More on Emily Bullis.

 

SPEAKERS

Wayne Stacy, Emily Bullis

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host Wayne Stacy, the Executive Director for BCLT. And today we're here to talk about the world of design patents and the rule on what qualifies as a primary reference. It seems that the Federal Circuit in the Campbell Soup case gave us unique guidance, things that we don't don't hear a lot from the Federal Circuit. So we brought today Emily Bullis of Fenwick to discuss this. Emily is a patent prosecution expert, with that rare specialty in the prosecution of design patents in both the US and abroad. So welcome, and thank you for joining us, Emily.

 

Emily Bullis  00:44

Morning. Thanks, Wayne. Thanks for having me.

 

Wayne Stacy  00:46

So, you know, maybe we start with a little bit of a negative question here. But how did the PTab get it so wrong?

 

Emily Bullis  00:55

Yeah, so I think we need to look at this in the wider context of how the PTO handles design patents, the allowance rate for designs is is incredibly high. I think the most recent number I saw on the PTO website was something like 85%. So for the most part, these these applications are not receiving art rejections, when we do get pushback from the examiner, it's usually on, you know, minor drawing inconsistencies, or, or wanting a fix to the broken line statement. But for the most part, we're really just not seeing art rejection. So these cases are getting allowed very regularly. I also think it's a little trickier in this case, than normal, because these these two patents at issue are for multi article designs, which is fairly unusual as well. The drawings both show this this soup dispenser that you might see in the grocery store, as well as a portion of the can itself this this cylindrical object, but not all of that is claimed, there are a ton of broken lines here, which which indicate unclaimed subject matter. And in each of the patents, the area that's actually claimed is it's it's really minor, it's just some vertical lines in the label area. It's a portion of the cylindrical object. And in one of the two patents, it's these these little tabs that are keeping the can in place. So I think coupling the fact that this is a multi article design, with the large number of broken lines here kind of creates even more ambiguity than there is for for more straightforward products. It makes the scope of the design patent harder to parse.

 

Wayne Stacy  02:39

Let me bring everyone up to speed on something that's pretty fundamental. And that's really the the guard for issuance of both utility and design patents. And that's obviousnes