Design Patents at the PTAB: Performance Gap Between Design and Utility Patents Highlights the Durability of Design Patents

Summer Associate Michael Nathanson also contributed to this article.

Since the inception of the Patent Trial and Appeal Board (“PTAB”) in 2012, design patents obtained a higher rate of favorable results in Inter Partes Reviews (“IPRs”) and Post Grant Reviews (“PGRs”) than utility patents. For example, the institution rate for design patents is about 38% compared to roughly 65% for utility patents. Even after institution, 65% of final written decisions involving design patents led to claim cancellation compared to 75% for utility applications. Design patents have also done well in ex parte appeals, where the Board reversed 45% of design patent rejections and only 32% of all rejections.

Design patent challenges are rare, however. With only 82 petitions filed, about 70% were IPRs and 30% were PGRs. The challenges are also concentrated among a few parties. LKQ Corp., an aftermarket auto parts supplier, has been the most active challenger, filing 20 petitions against General Motors – the most active design patent owner at the PTAB. The proceedings between LKQ and General Motors account for nearly 25% of all design patent IPRs and PGRs, with proceedings between Sketchers and Nike accounting for about 18%.

Although the sample size may be relatively small, the performance gap between design patents and utility patents at the PTAB is significant. Ultimately, design patents are almost 30% more likely to avoid institution than utility patents, and are 10% more likely to survive a challenge after institution.