The common adage is that design patents are easier, quicker and less expensive to obtain than utility patents. First-action allowances or ex parte quayle actions, so elusive in the utility world, occur regularly in design applications. A number of factors contribute to the positive assessment of design patent applications, but the main reason is that we—the general public—tend to see only the success stories. Because design patents (and their prosecution histories) generally only publish upon issuance, failed design applications that were rejected to the point of abandonment remain unknown to all but the applicant. Other applicants don't know what rejections stood in the way of allowance, how the law was applied by the examiner, what to avoid in future filings or what savvy arguments have been tried and failed. Only institutional applicants with large portfolios have access to enough rejected or abandoned applications to gain this understanding. In this article, Finnegan attorneys Elizabeth D. Ferrill and Elizabeth A. Shah discuss the need for applicants and practitioners to recognize what we don't know about design patent prosecution, why, and its effect on prosecution.
Previously published in Law 360.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
