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1. Should AIPLA file an amicus brief in In re Owens?

 YES
 (90%) 
 
 NO
 (10%) 
 
 ABSTAIN
 (0%)  

Total: 10

2. If so, at what stage?

 petition?
 (40%) 
 
 en banc briefing?
 (60%) 
 

Total: 10

3. If so, should the amicus brief address:

 the substantive ruling?
 (10%) 
 
 the dicta re?
 (60%) 
 
 Both?
 (30%) 
 

Total: 10

4. Why / Comments:

 

Further clarity regarding a subjective framework for inventor appreciation of "sub-designs" contemporaneously with the time of parent filing is necessary in order to permit the PTO to apply the written description analysis with some consistency.  The dicta of Owens misses the larger point regarding subsequent addition of straight-line boundary lines.  An amicus brief should be used as an opportunity to set forth the framework for a new test.

 (17%) 
 
 

​To the extent that the Federal Circuit has muddied the waters for future filings, more clarity would be beneficial. But the decision was right; if anything, it should be harder to broaden claims using continuations.

 (17%) 
 
 

This is a terrible decision.  It places form over substance.  The broken line introduction is merely a formality to outline the claimed portion of the industrial design.  The claimed region was clearly in the possession of the inventor regardless of the presence of the boundary line.  The decision should be attacked on all fronts because, if left as standing, it will place serious limits on the ability of designers to get the protection they deserve for their industrial designs.​

 (17%) 
 
 

​In view of Joel Sincavage’s ​presentation at USPTO Design Day, I believe that it is critical that AIPLA make its voice heard concerning the intersection between the written description requirements and design patents.  Although I believe that reasonble minds may differ on the precise situation in the Owens case, it is clear that the USPTO would like to use language in the previous Board decision and the Federal Circuit ruling to place extraordinary limits on the ability to the extent to which one changes solid lines to unclaimed, dashed lines in design patents.  I believe that the proposed USPTO position runs contrary to years of accepted practice, would severely prejudice owners of existing patent applications who filed with a vastly different understanding that what the USPTO proposes, and would significantly increase both the cost and complexity of design patent prosecution in the future.  At the same time, I believe that it is best to focus AIPLA's brief on the "slippery slope" effect that is already being seen from In re Owens, rather than directly attacking the final holding in the case.  As noted above, I believe that reasonable minds can differ on the ultimate result of the Owens situation, and I believe that it is most important for the design patent community to focus its efforts on ensuring that some ability to modify claim scope remains, even if the Owens holding is upheld.


Given that any cert petition is unlikely to proceed, I am in favor of moving forward with an amicus brief at the en banc stage.

 (17%) 
 
 

the dicta re the current PTO policy on when broken lines can be added where there is no line as well as chanigng a broken line to a solid line ​

 (17%) 
 
 

​If the Fed Cir grants the petition, then I think there's little question that we should file an amicus brief.  But until then, I think our bullets are better saved for other matters (especially in view of the fact that the USPTO might have roundtables on new matter issues).

 (17%) 
 

Total: 6