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When Amazon lies | Dunlap Bennett & Ludwig LLC

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Novelty Rejections in Design Patent Application Cases Where the USPTO Finds an Erroneous First Amazon Availability Date

In a design patent application, the design consists of the visual ornamental features incorporated into, or applied to, an article of manufacture. In other words, design patent application is to protect the appearance of a product.

Pursuant to 35 US Code § 102(a)(1), the USPTO will grant a design patent on the claimed invention unless, among other things, the claimed invention is not novel (novel) because it has been “described in a printed publication, or in public use, sale, or otherwise made available to the public before the effective filing date of the claimed invention.

This “print publication” is also known as “Non-Patent Literature” (NPL) and can be anything published online. More than ever (and surely even more in the future), USPTO examiners reject novelties based on NPLs found on the Internet. Often, NPL is a product sold on online marketplaces such as Amazon.com, Etsy.com, etc.

Importantly, these novelty rejections require the USPTO examiner to identify a publication date for the NPL prior to the actual filing date of the design patent application. It is not uncommon for the reviewer to identify a consumer comment associated with the NPL listing on, for example, Amazon. Other times, the reviewer cites the first availability date listed with the product on Amazon.

However, Amazon’s first available dates are unreliable because for some reason Amazon sometimes displays an earlier date, and the reviewer relies on this inaccurate first available date to establish novelty rejection. It can be very frustrating when that Amazon listing in the inventor’s own product is listed on his own Amazon webpage, and he knows for sure that the date is incorrect.

Question: What should a candidate do in this scenario?

Answer: Submit an INVENTOR’S STATEMENT UNDER 37 CFR §1.130 that establishes that the NPL is a derivation of inventorship and that the stated date of first availability is manifestly false.

First, the inventor signs such a statement under threat of perjury. Second, the inventor will need to gather evidence, usually in the form of attachments to the claim, to support such claim. This evidence may include readily available copies of a product page associated with the inventor’s Amazon web page, coupled with an Amazon notification email that establishes Amazon’s “creation date” for the listing. NPL in question from this Amazon webpage.

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