Polson Slides Design Patents
Margaret PolsonPolson Intellectual Property Law,
[email protected]
US Design Patents Overview1Facts about US design
patentsCopyright 2015 Polson IP Law2The filings of design patent
applications as the USPTO has risen more than 25% since 2009The
majority of this increase has been in Graphical user interfaces
(GUI) and designs for computers and mobile devicesMost US design
applications issue within 18 months from filingMost issue on first
actionWhat most patent practitioners used say about design
patentsThey are easy to design aroundNobody infringes a design
patentThey are hard to enforceCopyright 2015 Polson IP Law33Facts
about US design patentsCopyright 2015 Polson IP Law4US law provides
that a design patent infringer owes its entire profit on the
article to the patent owner-no apportionment required or allowedThe
majority of the damages in the Apple v. Samsung case was based on
the design patentsRecent Federal Circuit cases have continued to
strengthen design patents
When to file design patentsCopyright 2015 Polson IP Law5When the
client is in a niche market When you are worried about if inventive
step issues will allow you to get a utility patentSometimes the
ornamental design is what make it marketable; why spend more if you
dont have toProtecting spare parts market
5When to file design patentsCopyright 2015 Polson IP Law6To
allow the client time to develop trade dress in a design When the
client wants a quick patentWhen the client is manufacturing using
molds of some typeThere are different remedies for patent and
copyright infringement in the US, sometimes it matters6The Basics35
U.S.C. 171 Patents for designs. Whoever invents any new, original
and ornamental design for an article of manufacture may obtain a
patent therefor, subject to the conditions and requirements of this
title.The provisions of this title relating to patents for
inventions shall apply to patents for designs, except as otherwise
provided.
Copyright 2015 Polson IP Law77The BasicsA) a design for an
ornament, impression, print, or picture applied to or embodied in
an article of manufacture (surface indicia); (B) a design for the
shape or configuration of an article of manufacture; and (C) a
combination of the first two categories.See In re Schnell, 46 F.2d
203, 8 USPQ 19 (CCPA 1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd.
Pat. App. & Int. 1992).
Copyright 2015 Polson IP Law88The BasicsCopyright 2015 Polson IP
Law
Ornamental design does not mean ornamented design.99The
basicsCopyright 2015 Polson IP Law10US design patent applications
are examined for novelty and inventive step (obviousness).The term
for a US design patent is 15 years from the issue date (not the
filing date) currentlyThis is true regardless of how long the
application is pendingThere are no annuities on US design patents,
once the issue fee is paid, there are no more fees
10The basics Copyright 2015 Polson IP Law11The US laws for
naming inventors apply to design patents.Anyone who contributed to
the ornamental appearance of the article is one of the
inventors.The inventor list for the design may be different than
for a related utility patent You must send the prosecuting attorney
all material relevant to patentability including: patents, papers,
catalogs, web pages, information about prior sales, information
about competitor's similar products
DrawingsCopyright 2015 Polson IP Law12Line shading is highly
suggested, grey scale shading is not allowed (yet)
12DrawingsCopyright 2015 Polson IP Law13
13You can do color if the client wants to claim it, but it is
only advisable if color is part of the design. Copyright 2015
Polson IP Law14
DrawingsCopyright 2015 Polson IP Law15Wire form drawings are
allowed, but not suggestedThese can often be difficult to interpret
for lay peopleIn the US a jury determines infringement, so lay
people will be deciding the caseConfusion as to what the drawings
so can be costly
15Wire form drawingsCopyright 2015 Polson IP Law16
16Claiming part of an articleCopyright 2015 Polson IP
Law17Broken lines showing a border do not have to be placed on an
existing line on the item, this is called an unclaimed border.Any
broken line drawing putting in an unclaimed border must be done at
the US filing date at the latest.Copyright 2015 Polson IP Law18
The parts in broken lines do not have to be connected Copyright
2015 Polson IP Law19
In re Owens (Fed. Cir. 2013)Copyright 2015 Polson IP Law20
In re Owens (Fed. Cir. 2013)Copyright 2015 Polson IP Law21
Partial articleCopyright 2015 Polson IP Law22
22Using Broken linesCopyright 2015 Polson IP Law23
23Using broken linesCopyright 2015 Polson IP Law24
24Using broken linesCopyright 2015 Polson IP Law25
25Using broken lines Copyright 2015 Polson IP Law26
26Using Broken LinesCopyright 2015 Polson IP Law27
27
Copyright 2015 Polson IP Law2828Prosecution of the
applicationCopyright 2015 Polson IP Law29Multiple embodiments are
only allowed in an issued design patent if they are not patentably
distinct. Many embodiments can be included in the application as
filed.You may receive a restriction requirement requiring you to
elect an single embodiment. Divisional applications can be filed on
the other embodiments
29Pacific Coast v. Malibu Boats
Copyright 2015 Polson IP Law3030Pacific Coast v. Malibu
Boats
Copyright 2015 Polson IP Law31Pacific Coast v. Malibu BoatsDoes
an amendment in response to a restriction requirement count as an
amendment under Festo?Yes, for designs
We express no opinion as to whether the same rule should apply
with respect to utility patents, an issue not resolved by our prior
casesCopyright 2015 Polson IP Law3232Industrial Designs
overseasCopyright 2015 Polson IP Law33Industrial Design is the
least harmonized area of IP law Internationally.If a country is
important to you, talk to your counsel about it BEFORE you file
your US case to ensure proper support in your priority
documentNever assume anything-for example in Japan the design
patent for an actual car would not be infringed by a toy carMost
other countries have very different copyright laws, always ask
about what is coveredIndustrial Designs overseasCopyright 2015
Polson IP Law34The Hague Protocol may be a good way to save costs
filing IDs overseas, but make sure you know what your doing with
the drawings for each countryThe ways different countries interpret
disclaimed subject matter can be radically different, even within
EuropeFind competent design counsel in each country of
interest!
Copyright 2015 Polson IP Law35Thank you!35
