Is Design Patent Examination Too Lax

Abstract

To be patentable, a design is supposed to be novel, nonobvious, and ornamental. But every week, the U.S. Patent and Trademark Office (USPTO) issues patent for designs that seem to be none of the above. This state of affairs has led some commentators to argue that the USPTO is being too lax in examining design patent applications. Professor Crouch even argued that the USPTO’s high allowance rates indicate that the agency has silently “abdicat[ed] . . . its gatekeeper function in the realm of design patents.” This Article offers an alternate explanation for the high allowance rate for U.S. design patent applications. It argues that the USPTO approves so many design patent applications not because it is shirking its duties, but because it has to. Specifically, this Article argues that the U.S. Court of Appeals for the Federal Circuit has made it nearly impossible for the USPTO to reject any design patent claim — regardless of how ordinary, banal, or functional the claimed design might be. This suggests that we shouldn’t blame the USPTO for (all) bad design patents. It also suggests that neither supplying examiners with more prior art nor publishing design patent applications will, in and of themselves, significantly improve design patent quality. Finally, in light of the USPTO’s very high allowance rate, some might be tempted to conclude that design patent examination doesn’t work and, perhaps, should be abolished. But, if the real problem is not the examination model but the controlling Federal Circuit case law, then we shouldn’t give up on the examination model quite yet.