Robert S Katz


You are known as one of the foremost prosecutors of utility patents and industrial designs – what advantages do design patents offer over utility patents?

Design and utility patents are complementary rights in most situations; they should be considered on their own merit and not as alternative rights. In the majority of cases where applicable, an applicant would want to get protection through both routes.

    In the most basic of terms, design patents protect the way that an article looks, while utility patents protect an article’s functionality or other technical advancements.

    Design patents are typically less expensive to procure, easier to enforce and more likely to be granted. There is also a shorter pendency for design patents. This can be essential in many enforcement scenarios, where products are knocked off relatively quickly while the corresponding utility applications might still be pending.

How has your management style developed over career – particularly over the past 18 months of working remotely?

Like many things in our business, it is important to stay nimble so as to adapt to changing circumstances and covid-19 was a major reminder of this. For most clients, we have replaced in-person meetings and telephone calls with regularly scheduled video conferences. In these we can go over the status of cases, portfolio management and strategy, to ensure that we are in sync and continuing to provide cutting-edge advice.

What common mistakes do foreign rights holders make when prosecuting patents at the USPTO – and how can they avoid them?

Different mistakes are made when it comes to prosecuting utility and design patents. In many cases, foreign rights holders have US representatives file applications before the USPTO exactly as they were filed in the initial priority filings in their country. However, the laws and strategies associated with patent protection can be quite different in the United States and reproducing the exact filing is not usually the best approach.

    On the utility patent side, many foreign rights holders file with one independent claim focusing on one patentable distinction because of unity of invention requirements in their local country. This fails to take advantage of some of the benefits of the US patent system. Applicants should consider presenting a patent application with at least three independent claims to approach patentability from different angles, using different combinations of elements and methods.

    On the design patent side, the USPTO has a high threshold for definiteness. Some of the drawings as filed outside the United State are not considered to be ‘clear’ or ‘definite’ under current USPTO standards. Design patent drawings should be reviewed for Section 112 issues before being filed in the United States and modified if necessary.

    Finally, applicants should be strategic about protecting portions of a design prior to the filing stage in order to maximise design rights and provide an insurance policy-like strategy so that supplemental rights can be procured if needed.

Can you tell us about some of the biggest challenges facing your clients right now?

All our clients are facing covid-19-related problems and disruption to some degree, which affects everything from internal processes and the development of inventions to manufacturing and supply-chain issues. The clients that are more innovative and flexible have generally fared better than those with more rigid processes in place.

As the America Invents Act celebrates 10 years in force, what did it get right and what needs changing?

Positives about the America Invents Act include:

  • from a first-to-invent to a first-to-file system;
  • certain rules regarding formalities more lenient; and
  • the defence of best mode.

Areas for improvement include revising Section 101 so as to better distinguish it from the tests of Section 103 and 112.If done properly this will have the added benefit of encouraging investment and innovation in the United States.

Robert S Katz

Attorney and Principal Shareholder [email protected]

Robert S Katz is a principal shareholder in Banner Witcoff’s Washington DC office. Both nationally and internationally, he is considered to be one of the premier practitioners in the field of industrial designs, leading the way in the procurement and enforcement of design patents. On behalf of the firm’s clients, Mr Katz has helped to procure more than 7,000 design patents in the United States and more than 20,000 design patents/ registrations outside the country, and has also helped to successfully enforce more than 100 design patents.

Unlock unlimited access to all IAM content