U.S. Design Patents and the Hague Agreement Margaret Polson Polson & Associates, PC www.polsoniplaw.com mpolson@polsoniplaw.com 303-485-7640

Facts about US design patents The filings of design patent applications as the USPTO has risen about 25% since 2009 The majority of this increase has been in Graphical user interfaces (GUI) and designs for computers and mobile devices Most US design applications issue within 18 months from filing Copyright 2014 Margaret Polson

Facts about US design patents US law provides that a design patent infringer owes its entire profit on the article to the patent owner The majority of the damages in the Apple v. Samsung case was based on the design patents The original amount of damages awarded by the jury was $1.05 billion dollars, of which approximately $700 million dollars was awarded on the designs, or about 70 percent Copyright 2014 Margaret Polson

Infringement Gorham Co. v. White, 81 U.S. 511 (1871). “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” 81 U.S. at 528.

What can be protected with design patents in the US The ornamental, exterior design of an article of manufacture Can be part of an article Can be a two dimensional design-for example patterns on a surface Can be a graphical user interface (GUI), so long as a least a portion of the display screen is shown-not necessary to show the whole article Labels of products or product packaging Copyright 2014 Margaret Polson

When to file design patents When the client is in a niche market When you are worried about if inventive step issues will allow you to get a utility patent Sometimes the ornamental design is what make it marketable; why spend more if you don’t have to Protecting spare parts market Copyright 2014 Margaret Polson

When to file design patents When the client wants a quick patent When the client is manufacturing using molds of some type To allow the client time to develop trade dress in a design Copyright 2014 Margaret Polson

Drawings Line shading is highly suggested, grey scale shading (using different shades of grey instead of lines) is not allowed (yet, can be used in a Hague) Copyright 2014 OPLF

Drawings Copyright 2014 OPLF

Drawings Wire form drawings are allowed, but not suggested These can often be difficult to interpret for lay people In the US a jury determines infringement, so lay people will be deciding the case Confusion as to what the drawings claim can be costly Copyright 2014 OPLF

Wire form drawings Copyright 2014 OPLF

Wire form drawings It can be unclear which lines are a contour and which lines are actually a feature on the object Can result in expensive legal arguments at enforcement time as to the scope of the claim Copyright 2014 OPLF

Claiming part of an article Broken 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. It is not possible to add an unclaimed boarder in a continuation application without giving up the original filing date of the parent application Copyright 2014 OPLF

Copyright 2014 OPLF

The parts in broken lines do not have to be connected Copyright OPLF 2014

The broken lines do not have to be straight Copyright 2014 OPLF

Using the Hague Multiple embodiments can be included in an international application only if they are in the same class Designs are classified in accordance with the Locarno International Classification for Industrial Designs. Signatory countries can have either registrations with no examination other than for formalities and/or examination for other requirements, including for novelty and/or non-obviousness Each country’s substantive law governs what can be protected Copyright 2014 Margaret Polson

Patent Law Treaties Implementation Act of 2012 The Act makes the necessary changes to US law so that the US formally accedes to both the Hague Agreement and the Patent Law Treaty The act was signed by President Obama on December 18, 2012 The Hague portion of the act goes into effect three months from date the US deposits its Articles of Accession with WIPO Copyright 2014 Margaret Polson

Patent Law Treaties Implementation Act of 2012 The Act includes a number of declarations under the treaty to accommodate US law, including allowing more time to transmit applications to the IB, allowing examination, allowing the US to apply the “unity of design” standard, and requiring the application include to name the inventor. Copyright 2014 Margaret Polson

Patent Law Treaties Implementation Act of 2012 The USPTO is has published the draft rules Many questions remain unanswered about mechanism for filing IDS, paying issue fees, assignments, renewals, etc. Copyright 2014 Margaret Polson

Using the Hague- US US applicants will be able file the international application either with the USPTO or directly with WIPO Design patent applications are subject to the provisions of 35 U.S.C. 184 requiring a foreign filing license See New 35 U.S.C. 382 (d) Copyright 2014 Margaret Polson

Using the Hague- US New 35 USC 383. International Design Application. “In addition to any requirements pursuant to chapter 16 of this title, the international design application shall contain: “(1) a request for international registration under the treaty; “(2) an indication of the designated Contracting Parties; “(3) data concerning the applicant as prescribed in the treaty and the Regulations; “(4) copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international application, presented in the number and manner prescribed in the treaty and the Regulations; “(5) an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used, as prescribed in the treaty and the Regulations; “(6) the fees prescribed in the treaty and the Regulations; and “(7) any other particulars prescribed in the Regulations. Copyright 2014 Margaret Polson

Using the Hague –US New 35 USC 384. Filing Date. (a) In General- Subject to subsection (b), the filing date of an international design application in the United States shall be the effective registration date. Notwithstanding the provisions of this part, any international design application designating the United States that otherwise meets the requirements of chapter 16 may be treated as a design application under chapter 16. ‘(b) Review- An applicant may request review by the Director of the filing date of the international design application in the United States. The Director may determine that the filing date of the international design application in the United States is a date other than the effective registration date. The Director may establish procedures, including the payment of a surcharge, to review the filing date under this section. Such review may result in a determination that the application has a filing date in the United States other than the effective registration date. Copyright 2014 Margaret Polson

Using the Hague- US New 35 UCC 385. Effect Of International Design Application. An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384 of this part, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16 of this title. Copyright 2014 Margaret Polson

Using the Hague- US You can claim priority from: a prior foreign application an international design application designating at least one other country other than the US a prior application filed under the PCT designating at least one other country other than the US Copyright 2014 Margaret Polson

Using the Hague- US New 35 USC 390. Publication of International Design Application: The publication under the treaty of an international design application designating the United States shall be deemed a publication under section 122(b). This means that damages could be available from the date of publication Copyright 2014 Margaret Polson

Using the Hague-US Duty of disclosure still applies, an IDS needs to be filed at the USPTO If the Hague application claims priority, you still need to file a certified copy with the USPTO It is not possible to defer publication of your Hague application if you designate the US (proposed rule 37 CFR § 1.1027) Copyright 2014 Margaret Polson

Using the Hague-US There are two different sets of standards for reviewing the drawings of an IDA or a normal design application § 1.84 and proposed §1.152- 1.154 The current proposed rules do not make it clear which standards will be used for either IDA applications converted to a regular application or divisionals/continuations of an IDA If 1.84 is not amended and applies to either of these, you may get a rejection as to formalities of the drawings in a child application Copyright 2014 Margaret Polson

Using the Hague-US Under the Hague you can file with color drawings or photographs with no additional fees or petitions You can have mixed drawings and photographs for the same embodiment Copyright 2014 Margaret Polson

Using the Hague-US 35 USC 112 is substantive US law, your IDA can be rejected under 112 EVEN if WIPO approved your figures It would be highly likely that a mixed photograph and drawing application would receive a 112 rejection Restriction practice is substantive US law, you can and will receive restriction requirements Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats Question for the court: does prosecution history estoppel apply to design patents? In utility patents prosecution history estoppel limits a patentee's ability to recover under the doctrine of equivalents In design patents there is no separate cause of action for equivalents infringement "the accused design could not reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs” principles of equivalency are part of the base infringement analysis Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats (1) whether there was a surrender; (2) whether it was for reasons of patentability; and (3) whether the accused design is within the scope of the surrender.” Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats Does 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 cases” Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats Defendant argued the whole range of holes between 4 and zero was surrendered “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs. Claiming different designs does not necessarily suggest that the territory between those designs is also claimed. “ Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats The defendant did not argue that the scope of the surrendered two-hole embodiment extended to the three-hole embodiment because the three hole embodiment was not colorably different from the two-hole embodiment. Under these circumstances, we need not decide whether the scope of the surrender is measured by the colorable imitation standard. Copyright 2014 Margaret Polson

Pacific Coast v. Malibu Boats Problems for the future: What if the scope of the elected embodiment with equivalents overlaps with the scope of the unelected embodiment? Would we be better off with dedicated to the public as the legal reasoning rather than prosecution history estoppel? Copyright 2014 Margaret Polson

Issues to be aware of Proposed 37 CFR § 1.1062 states that the Office shall “send to the International Bureau within 12 months from the publication of the international registration under Rule 26(3) a notification of refusal (§ 1.1063)”  To the extent a refusal is inadvertently not sent within the 12- month period, pursuant to Article 14(2), Rule 18(1)(c) and § A ¶ 05.25 of the Guide the USPTO intends to notify WIPO that an international registration will produce its effects in the US six months after the date of expiry of the refusal period, or later if a refusal was unintentionally not communicated during the refusal period. Thus, regardless of whether a refusal was sent within the 12-month refusal period, there is still a further six-month period in which the Office is not required by the Hague Agreement to “produce the effect referred to in Article 14(2)(a)” (i.e., issue a US design patent). Copyright 2014 Margaret Polson

Issues to be aware of Like the Madrid Protocol system, the Hague Agreement system is a closed system (must have a connection to a party). Article 16 states that an assignment of the rights to an international registration shall be recorded at the International Bureau only if the new owner is also entitled to use the Hague Agreement. Copyright 2014 Margaret Polson

Assignments continued The Hague is silent about what effect, if any, assigning all or part of a Hague Registration to a non-entitled party would have on the validity By contrast, 15 U.S.C. § 1141, which relates to assignments of US extensions of protection under the Madrid Protocol, specifically prohibits assignment to a non- entitled party Copyright 2014 Margaret Polson

Renewals 35 USC § 41(b)(3), which PLTIA did not amend, states that “[n]o fee may be established for maintaining a design or plant patent in force.” Thus, no fees are required to maintain a US design patent issuing from an IDA-US during its 15-year term. Article 17(3)(a) of the Hague Agreement, however, states that “[p]rovided that the international registration is renewed . . . , the duration of protection shall, in each of the designated Contracting Parties, be 15 years counted from the date of the international registration.” Copyright 2014 Margaret Polson

Drafting your application for the Hague Each country’s substantive law controls on what is allowed in the drawings and which different designs can be in a single application In the US you can generally amend the figures to put things in broken lines that were not in broken lines originally Plan your figures accordingly. Copyright 2014 Margaret Polson

Questions? http://www.oppedahl.com/designs-l/ . An industrial designs listserv Copyright 2014 Margaret Polson