What are the challenges in establishing commercial success for design patents?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Establishing commercial success for design patents presents unique challenges. The Manual of Patent Examining Procedure (MPEP) 716.03(b) specifically addresses this issue: “Establishing a nexus between commercial success and the claimed invention is especially difficult in design cases. Evidence of commercial success must be clearly attributable to the design to be of probative value, and not to brand name recognition, improved performance, or some other factor.” The MPEP cites a relevant case: “Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984) (showing of commercial success was not accompanied by evidence attributing commercial success of Litton microwave oven to the design thereof).” To overcome these challenges, applicants for design patents must provide clear evidence that the commercial success is directly attributable to the claimed design features, rather than other factors such as brand recognition or functional improvements. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Publications May Serve as Evidence for Facts at Issue MPEP 716 Recommended Oath or Declaration Required for Traversing Rejections MPEP 716 Required Primary Examiner Must Review Evidence to Overcome Rejection MPEP 716 Affidavits Must Be Made Under Oath MPEP 716 Declaration Can Replace Affidavit in Patent Applications MPEP 716 Declaration Must Acknowledge False Statements MPEP 716 Required Declaration Must Acknowledge Truthfulness of Statements MPEP 716 Required Form Paragraphs for 37 CFR 1.132 Affidavits Must Be Used MPEP 716 Recommended Requirement to Indicate Overcome Rejection with Statutory Grounds MPEP 716 Requirement for Indicating Unovercome Rej...