Design Patent Institution & Invalidity Outcomes
Presented below are design patent institution and invalidity outcomes for IPR, PGR and Reexamination proceedings involving design patents, updated as of October 16, 2023. All information is publicly available.
Challenging Design Patents
The United States Patent and Trademark Office (USPTO) has three types of proceedings which can be used to challenge the validity of a design patent: Inter Partes Review (IPR) or Post Grant Review (PGR) trial proceedings conducted by panels of three administrative law judges at the USPTO Patent Trial and Appeal Board (PTAB), and Ex Parte Reexamination, conducted by USPTO patent examiners. All three types of proceedings are noticed in the Official Gazette for Patents and can be found in the USPTO’s Patent Trial and Appeal Case Tracking (IPR and PGR) and Patent Center (for reexamination ) online databases.
Instituting Design Patent Challenges
Each Inter Partes Review (IPR) and Post Grant Review (PGR) is first evaluated for a determination of whether or not to institute trial for a determination of patentability on the merits. Likewise, each ex parte reexamination is first evaluated for a determination of whether to order reexamination of the subject design patent. The chart below illustrates institution rate as a percentage.
Invalidating Design Patents
Once instituted, the PTAB will conduct trail and issue a final written decision on the merits of the single design patent claim, either finding it unpatentable or not unpatentable; in reexamination proceedings, the Examiner will issue a certificate either cancelling or upholding the claim. Not all IPR and PGR trial challenges are instituted, but once underway, invalidity outcomes are greater than 70%, whereas nearly all ex parte reexamination proceedings are ordered and only 36% are invalidated.
Blended Survival
Some design patents survive by failure to institute, with the Board finding the proffered prior art insufficient to present a reasonable likelihood that the petitioner would prevail (IPR), that more likely than not at least one challenged claim is unpatentable, or a substantial new question of validity; others survive after a deeper analysis on the merits. Taking these outcomes together, survival could be counted as the percent of proceedings that were not instituted combined with the number of final written decisions finding the design not unpatentable, divided by the number of decisions on institution. But blended survival may be misleading for including failed institutions, when the prior art presented just didn’t merit a merit evaluation of the design patent, legally issued with presumption of validity.
Merit Survival
True design patent survival, on the merits, in an instituted AIA proceeding or reexamination, is less likely than invalidity.
Many, if not most, of these challenges involve obviousness rejections.
The Federal Circuit ordered rehearing in LKQ CORPORATION v. GM TECH, Case 21-2348, to consider whether, inter alia, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrules or abrogates In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996), or nonetheless applies to design patents and suggest the court should eliminate or modify the Rosen-Durling test?
It is incongruous for the obviousness standard to be challenged as inappropriately rigid, even in view of the Supreme Court’s call for and an expansive and flexible approach in KSR, when only 28% of the design patents decided on the merits in AIA trials survive.