Daniel Gajewski is a director director in Sterne, Kessler, Goldstein, & Fox P.L.L.C.’s Mechanical & Design Practice Group. He has over 10 years of experience helping clients achieve strategic utility and design patent protection and navigate the IP landscape for their products. Dan is currently Vice Chair of the Intellectual Property Owners Association Industrial Design committee.
For more information or to contact Mr. Gajewski please visit his Firm Profile Page.
The U.S. Patent and Trademark Office’s (USPTO’s) new director wasted no time getting down to business in terms of protecting design innovation in the United States. Only two days after being sworn in, Director Kathi Vidal announced the release of the USPTO’s Summary of public views on the article of manufacture requirement of 35 U.S.C. § 171. This report summarized public comments received in response to a December 2020 request by the USPTO. It is fitting to see the USPTO giving attention to protecting design innovation in new and emerging technologies since, as Director Vidal noted, design patents have been shown to provide a “catalyst for growth” and a “competitive edge” for U.S. manufacturers. With advancements in technology since the USPTO first issued guidelines for examining computer-generated designs in 1996, the Office wisely sought the public’s comments on whether its approach to 35 USC § 171’s requirement that a design be for an article of manufacture should be revised to account for new and emerging technologies.
In recognition of China’s increasing importance in the global IP landscape, patent applications in China by U.S.-based applicants have steadily increased in recent years. Data compiled by the World Intellectual Property Organization (WIPO) in its World Intellectual Property Indicators 2017 and 2018 reports show the number of regular patent applications in China filed by U.S.-based applicants increasing by about 14% from 2016 to 2017. Over the same period, the number of U.S. utility patent applications filed by U.S.-based applicants fell by about 0.5%. Whatever the story is behind these numbers, U.S.-based applicants are clearly interested in obtaining patent protection in China, and China is courting that interest. Most U.S.-based applicants will naturally gravitate toward protecting their inventions using China’s so-called “invention” patent. This is China’s counterpart to a U.S. utility patent. But China also has the world’s most active utility model system. In many cases, a U.S. patent application could be filed as either a utility model application or an invention application in China. In recent years, the China National Intellectual Property Administration (CNIPA) has been quietly updating its utility model system by increasing the degree to which utility model applications are substantively examined.