Guest post by teachers Sarah Burstein (University of Oklahoma) and Saurabh Vishnubhakat (Texas A&M University).
In our new journal, The truth about design patents, we debunk three widely held, but incorrect, views on U.S. design patents. Taken together, these myths paint a grim picture of design patents:
- Half of all design patent applications are rejected.
- Most claimed design patents are invalidated in litigation.
- Most design patents in dispute are not infringed.
From this perspective, design patents are hard to get, hard to defend even if you get them, and hard to get back even if you get and defend them. These beliefs are commonplace in literature and often invoked without citation. But, when we traced these claims, we found an origin story of weak support and poorly understood data.
In our article, we provide more current and transparent statistics to replace each myth that we debunk. However, we strongly caution against overinterpreting our results.
Where do these myths come from?
The origins of these claims lie in three old and poorly understood sources: a 1985 study by Thomas Lindgren, a 1979 study by the USPTO, and a 1953 study by Raymond Walter. The Lindgren study contributed to all three claims, while the USPTO and Walter studies primarily contributed to the second claim regarding frequent invalidation during litigation.
A big problem with these studies is that, as you can see from the summary above, they are all very old. Walter’s data predated the passage of the Patent Act of 1952. Although the most recent, the Lindgren study, was published in 1985, it only considers data up to 1983. And the Federal Circuit had not yet decided on its first design patent case at this point. So these studies can’t tell us much about what’s happening in the era of the Federal Circuit, unless we assume – unreasonably – that the Federal Circuit did not significantly change the law. on design patents.
We also found other problems with these studies. For example, Lindgren noted in his paper that his sample size was too small to draw statistically significant conclusions. But his data has been cited by others, in citation networks that we trace in much more detail in the article, as if statistically significant. Additionally, a 1999 paper misquoted Lindgren for a claim that the 1985 study didn’t actually make, and that error is what hardened into the first piece of conventional wisdom noted above: that half of all design patent applications are rejected.
What’s the real story?
Recognizing that the best way to fight bad data is with better data, we also offer corrections and updates to the record. The following conclusions about the current state of affairs follow the same sequence: acquire design patents, defend them and enforce them.
Acquisition of design patents
For almost the last quarter century, the success rate for design patent applications appears to have been over 85%, not the 50% reported by Frenkel in 1999. (We note that our findings are consistent with what Prof. Crouch found in his 2010 study of Patent Designs Examination.)
Authorization of design requests as a share of total assignments (1989-2020)
Design request acceptance rate based on the total number of design requests filed in the same year (1989-2020)
Our source is the USPTO’s own annual reports dating back to 1989, the earliest data that is readily available. These data show that, since 1989, the apparent design patent grant rate has remained at or above around 70%, while the volume of design patent filings has quadrupled over the same period. In the mid-1990s, this rate was close to 80%.
But most ordinary design applications (i.e. those not filed through the Hague system) remain confidential and unpublished until granted as patents. So how can we come to this conclusion if application-level data is all largely unavailable? USPTO Annual Report data reports three totals relevant to us: (1) newly filed design applications that year, (2) authorized design applications that year, and (3) design applications abandoned that year. From this we can deduce the success rate of design requests. It’s not perfect but it’s the best we can do right now.
Defend design patents
Likewise, our research did not support the claim that most disputed design patents are invalidated by the courts. In fact, the opposite is true. For the period 2008-2020, district courts that issued decisions on the validity of design patents upheld them (i.e. found them “not invalid”) 88.4% of time, and only 11.6% of these decisions resulted in the invalidation of a patent. Similarly, during the same period, the district courts that issued decisions on the enforceability of design patents upheld them 99.5% of the time, and only 0.5% were upheld. deemed inapplicable. The full article explains how we arrived at these numbers, which are based on a study of nearly 1,200 case documents in US district courts where a decision has been made on the validity or enforceability of the patent.
(We note that our findings are consistent with what Andrew Torrance found in his 2012 study of design patent litigation. To some extent, our findings are even more favorable to patentees than the Torrance study. .)
We also reviewed design patent results at the International Trade Commission and the UPSTO Patent Trial and Appeal Board. There were fewer cases in these courts, but the data we found paints a picture that is far from bleak.
For the period 2011-2020, ITC validity decisions upheld the patent 95% of the time and invalidated it only 5%. Given the ITC’s relatively small population of design patent cases, we caution against strong conclusions about the strategic behavior of courts, as often seen with utility patents. Yet the available data suggests that the ITC does not invalidate two-thirds of the design patents claimed there.
Meanwhile, since the PTAB trial proceedings went online in 2012 through 2020, the survival rate of design patents in these administrative trials has been 79%, reflecting a 78% survival rate among cases PGD and 81% among PGR cases. We refer to an overall survival rate because patents can survive (1) when the petitions challenging them are never filed – i.e. they are examined by the PTAB – as well as (2) when they are evaluated on the merits and are deemed not invalid. The overall PTAB survival rate we report takes both into account.
Application of design patents
Finally, our research did not support the claim that most of the design patents in dispute are not infringed:
Infringement findings as a share of design patent infringement findings by district courts (12-month average) (2011-2021)
Among district court cases decided between 2011 and 2021, the share of decisions in which the court found infringement showed some volatility, but in general the share of design patent decisions in which court found infringement has remained almost entirely above 50% since 2011. Since 2015, the share of design patent decisions in which the court has found infringement has remained above 80%.
Again, we caution against over-interpreting these results. Our goal is to correct course and redirect conventional wisdom that relies on an inaccurate and incomplete statistical picture. Thus, we are extremely aware of the risk of replacing one erroneous view with another.
What happens afterwards?
A number of people have called for changes to the design patent system, frequently relying on the myths we have now debunked. We hope that our paper will shed more light on these debates and, at a minimum, encourage more factual discussion of these important policy issues. We also call for more empirical research and more transparency of data in this area. For example, we see no good reason for the USPTO not to publish all design patent applications. We know the USPTO is bound by current law, and we call on Congress to reconsider this policy and stop exempting design patents from the general publication requirements of 35 USC § 122.
Reasonable minds may differ as to whether 18 months is the right time for publication, as it is with utility patents, but there’s no good reason – at least none we’ve heard yet. – to keep them secret forever (unless granted). Publishing these applications would not only provide more data for research and policy analysis, but also provide transparency about how the USPTO processes applications for this increasingly important class of patents.
Editor’s note: We require disclosure of conflicts of interest for guest posts, including financial interests and representation of interested parties. One of the authors (Vishnubhakat) indicated a mitigated potential financial conflict as he owns shares in a number of companies, including some technology companies that hold utility and/or design patents.