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.

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