Remarks delivered at the Design Law 2020 Symposium
Director of the U.S. Patent and Trademark Office Andrei Iancu
December 10, 2020
As prepared for delivery
Thank you, Tracy Durkin and Rob Katz, for organizing today’s symposium, and for your dedication to improving our system of design patents.
There are many new developments and moving parts in design patent law. Intellectual property (IP) law in general is never static. With new court decisions, new legislation, and new technologies impacting business, culture, and society, we are in a constant state of change. This is as true for design patents as it is for utility patents, and all other forms of intellectual property.
As this audience knows, design patents in the United States came into being in 1842, some 52 years after the first utility patent laws were passed in the Patent Act of 1790. The first U.S. design patent issued that same year, in 1842, to George Bruce, and it was for a new printing typeface. Today, new typefaces continue to be created and protected. By the way, George Bruce’s first design patent had no art or images. Instead, Mr. Bruce provided a written description of his new typeface. Today, in the United States, judges try to avoid using words altogether to describe designs when making infringement determinations. Instead, they compare the art in the design patent to the art of the accused infringer to determine if there are grounds for infringement. Things have certainly changed.
And here is another change: the same year that Mr. Bruce received his design patent in 1842, only 12 other design patents were issued in the United States. By 1995, that annual number had increased to 15,000 design applications. And by fiscal year (FY) 2020 that just ended in September, the United States Patent and Trademark Office (USPTO) received more than three times that number: almost 47,500 design filings, an increase of 4.2% from 2019. Compare this growth in design patents with the mere 0.7% growth in utility patents in 2020. As a result, the USPTO hired 38 new design examiners in FY 2020, and we ended the year with more than 200 design examiners. We expect continued growth, and we plan on hiring additional design examiners this year. By the way, IP offices around the world receive a total of almost 1.5 million design patent applications per year.
Design patents are a critically important part of the overall intellectual property ecosystem. Since the beginning of the modern era of invention in the mid-1800s, design has been an essential aspect of the development of new products, and their ease of use. Design enables products to be sold to billions of people, despite massive differences in language and culture.
Interestingly, design law differs from country to country, perhaps even more than utility patents. For example, the U.S. design system requires a substantive examination, where each application is reviewed for novelty, non-obviousness, and proper disclosures, including written descriptions and enablement. On the other hand, many European countries have a registration-type of system, where the application is only looked at for formalities. They are not substantively examined for novelty.
The U.S. system has one 15-year term, and no renewals, unlike Europe, where the initial term is often five years, with renewals available for up to 25 years or longer. In other words, the U.S. system provides design patent holders more protection initially, but the EU grants longer periods of protection. Some argue that the EU system can be burdensome for registration holders having to pay more fees, and it requires additional administrative actions for each renewal—even though it has the ultimate possibility of longer-term protection.
In addition, enforcement is as important for design patents as it is for utility patents and other forms of IP. The United States is constantly working to enhance the enforcement of our design patents. During the current session of Congress, for example, the Counterfeit Goods Seizure Act of 2019 would have added additional measures at the border to prevent the importation of counterfeit goods that infringe upon design patents. This bill did not make it through the legislative process this term, but hopefully our legislators will persist.
There are also other plans to improve U.S. design patent rights. This past September, we issued a request for information on how artificial intelligence (AI) can help with image searching for design applications. The response was excellent, and we are currently reviewing the submissions.
In general, and to state the obvious, AI is already a major technological force. A recent USPTO study found that AI patent applications doubled between 2002 and 2018. AI technology is already widely used throughout industry: in web search and social media, in finance and investment, bio-informatics, retail e-commerce, in the modeling and design of complex new products, the robotics and automated processes needed to manufacture them, and so much more. You can see our full AI report on our website, at uspto.gov. And with the development of new graphical user interfaces and electronic products connected via 5G networks through the Internet of Things, AI will have a tremendous impact on design as well.
At the USPTO, we are already putting in place AI tools to assist our patent examiners searching prior art that is being generated at an accelerating rate in the United States and around the world. This is just the beginning, as the Office will be making increased use of AI tools across the board. As I have said in the past, given the current state of technology and filing trends, AI tools used at IP offices such as ours are no longer nice things to have; they are “must haves.”
Turning now to policy considerations with respect to digital designs, the United States needs to consider a new, modern approach that takes into account the realities of current and future technology trends. To that end, the USPTO is reviewing the “article of manufacture” requirement of Section 171, as well as other policy considerations surrounding the patentability of digital designs, including virtual and augmented-reality designs. The prevalence and importance of digital designs continues to explode. Virtual platforms are now used daily in our business transactions, and design interfaces are critical. They are often the most important component for the commercial success of certain products and services.
At the same time, new computing and optical capabilities are enabling digital products to move from conventional electronic screens, to projections, holograms, and other innovative displays. This evolution in technology challenges the traditional notions of protecting only designs housed on a physical product. The global IP trends also indicate a movement away from these traditional requirements for industrial design protection.
Some of our key trading partners have adopted practices enabling protection of designs detached from a physical product, or they have amended their practice recently to do so. It is important that the U.S. IP system, and the design patent system in particular, also stays flexible enough to encourage innovation that is relevant to the times. We should not be automatically hamstrung by legacy approaches that were developed for past technologies. Certain restrictions may have once served us well, but they might no longer make sense given major changes in technology and business. We should be open to study the new facts on the ground, and assess whether a change is needed in light of new circumstances. In other words, we should be willing to adapt to the times, as appropriate.
For example, is there a practical reason for an interactive display that appears on your skin or in the air to be treated differently, for design patent purposes, as compared to a similar display found on a more conventional display screen? Ever since Mr. Bruce pursued design patent protection for his new typeface (a font), America has historically been a world leader in design protection. And today, typefaces are able to be protected without having to claim the wooden block that was a technological necessity in 1842, but is long obsolete. Should various types of digital displays be treated differently? These are questions that we should answer, after thoughtful consideration. And we want to hear your thoughts on all of this as well.
Turning now to the international front, we continue formal discussions with other countries on the harmonization of patents, industrial designs, and trademarks. This past October 29th and 30th marked the five-year anniversary of the ID5, and the United States hosted the first-ever virtual annual meeting. It was a great success. Among other things, we have worked with IP offices in Japan and Korea on developing a set of common recommended design formalities that are in line with the draft Design Law Treaty that is currently pending at WIPO. We have completed 16 projects and studies on subjects ranging from eligibility, grace periods, partial designs, new technology designs, and 3D printing.
Our comparative study of available design infringement remedies will be published on the ID5 website in coming months. Also at the October meeting of the ID5, the partners agreed to undertake studies on term and renewal protection, and on deferred publication and examination. We will engage with the ID5 in the use of new technologies in examining and issuing design rights. And we intend to solicit stakeholder input by unveiling a joint communication plan that will allow for continued engagement. ID5 remains a critically important and relevant group for the development of design IP systems in major jurisdictions.
And in other multi-lateral fora, we are implementing WIPO’s Digital Access Service for designs, including an electronic document exchange system that has made seeking design protection in multiple jurisdictions more efficient. This system will result in substantial cost savings for applicants. In just a few years, we went from zero participants for designs, to 18 jurisdictions representing more than 90% of the global design filings. This would not have happened without the USPTO leading the effort.
Finally, and on a broader scale not unique to designs, we have recently launched a new National Council for Expanding American Innovation (NCEAI) aimed at broadening the innovation ecosystem to include more women, more minorities, and more people who live far from the current innovation hubs in America. Recent studies show that by harnessing the creative talents of all Americans, we could quadruple the number of inventors and increase the overall level of U.S. gross domestic product (GDP) per capita by 4.4%, or by $1 trillion annually.
This is no idle exercise: Expanding participation in the innovation ecosystem is one of our nation’s best and most tangible opportunities for enhancing economic growth and improving the standard of living and quality of life for every American. The bottom line is this: our country needs more people to get engaged in the innovation economy, and we need your help in doing so. Please visit the NCEAI webpage on our website at uspto.gov and let us know your thoughts on this critically important issue of historic and national importance.
Finally, I want to thank all of you for your continued work to improve our IP systems. And thank you, Tracy and Rob, for inviting me to this event. It is an honor for me to be with all of you.