Have you ever heard of a design patent application that remained pending for nearly 11 years? Well, if you haven’t prior to now you have now. The design patent application was originally filed on January 4, 2000, and the design patent was issued earlier today as U.S. Design Patent No. D629,412. The long and tortured path to obtain the design patent on a drop down menu took 10 years and 50 weeks! Almost unbelievable. Getting this one patent application off the books should meaningfully help the averages, which is a sad commentary in and of itself.
In reviewing Public PAIR it becomes apparent that nothing was substantively done on this design patent application for a full 2 years. The first substantive event occurred on January 4, 2002, when the patent examiner issued a Non-Final Rejection. Prosecution proceeded forward at an excruciatingly slow pace for a design patent application, ultimately necessitating an Appeal Brief to be filed on January 5, 2004. Then the application seems to have done one of the truly great Rip Van Winkle impersonations of all time, again laying dormant for nearly 4 years. The next substantive entry is an Ex Parte Quayle Action dated December 11, 2007, some 3 years and 48 weeks after the Appeal Brief was filed, and now nearly 7 years after the application was initially filed.
In the Ex Parte Quayle Action dated December 11, 2007, the examiner explains that the obviousness rejection is being withdrawn “based on a reconstruing of the claim that emerged during the appeal conference.” I guess you could call that a successful appeal conference, but how could you characterize an appeal conference 7 years into a case a success, particularly when it took another 4 years to get a patent issued?
It seems that when the application wasn’t MIA and was actually being considered, the primary stumbling blocks revolved around the characterization of the drop down menu as conveying the impression of a translucent/transparent surface. The examiner at one point explained that translucent implies three-dimensional, and a screen is only two-dimensional. In any event, the second stumbling block dealt with the drawings and dotted lines or dashes or some nonsense. For crying out loud, couldn’t this have been done in a far more expeditious manner?
Take a look at the drawings as originally filed:
Now take a look at the drawings in the patent that issued earlier today:
OMG! To think this took 11 years!
Oh yeah, by the way, Apple managed to get a design patent on a drop down menu! The design patent explains:
The claimed design is a user interface for a computer display with a large, lower rectangle that conveys the impression of a translucent/transparent surface and a small, upper rectangle that does not convey the impression of a translucent/transparent surface.
In other words, it appears that they have acquired a design patent on a drop down menu where that which appears in the drop down part is translucent/transparent, which apparently doesn’t mean three-dimensional.
It is nonsense like this that is flat out disheartening. Of course this could have been handled better, but it wasn’t. Now we have a design patent that looks about as obvious as putting peanut butter on one slice of bread and jelly on another and combining the two and calling it a peanut butter and jelly sandwich.
Seriously, we all know what will happen with this patent. It will be picked up by the anti-patent folks and waved about and ridiculed because the Patent Office issued a patent on a transparent drop down menu. Never mind the fact that obviousness needs to be determined as of more than 11 years ago! The facts won’t be allowed to get in the way of a good narrative, and those of us who defend the patent system will be forced to deal with something that is indefensible. Who can remember whether something like this was non-obvious 11 years ago? For crying out loud, this application was filed when Bill Clinton was still President!
There is no defending this lack of process and ridiculous delay, so I won’t. Now, however, as the design patent should be close to coming off patent, we will have to deal with this pending design patent for 14 more years. You see, the design patent term starts with the issue date and there are no maintenance fees. So those of you who might be inclined to make a drop down menu where the top part is not transparent and the bottom part is transparent you will have to wait until December 22, 2024, that is if you don’t want to run the risk of being a patent infringer!