Margaret Polson Polson Intellectual Property Law, PC US Design Patents Overview

Facts about US design patents Copyright 2015 Polson IP Law 2 The filings of design patent applications as the USPTO has risen more than 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 Most issue on first action

What most patent practitioners used say about design patents They are easy to design around Nobody infringes a design patent They are hard to enforce Copyright 2015 Polson IP Law 3

Facts about US design patents Copyright 2015 Polson IP Law 4 US law provides that a design patent infringer owes its entire profit on the article to the patent owner-no apportionment required or allowed The majority of the damages in the Apple v. Samsung case was based on the design patents Recent Federal Circuit cases have continued to strengthen design patents

When to file design patents Copyright 2015 Polson IP Law 5 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

When to file design patents Copyright 2015 Polson IP Law 6 To allow the client time to develop trade dress in a design When the client wants a quick patent When the client is manufacturing using molds of some type There are different remedies for patent and copyright infringement in the US, sometimes it matters

The Basics 35 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 Law 7

The Basics A) 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 Law 8

The Basics Copyright 2015 Polson IP Law Ornamental design does not mean ornamented design. 9

The basics Copyright 2015 Polson IP Law 10 US 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) currently This is true regardless of how long the application is pending There are no annuities on US design patents, once the issue fee is paid, there are no more fees

The basics Copyright 2015 Polson IP Law 11 The 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

Drawings Copyright 2015 Polson IP Law 12 Line shading is highly suggested, grey scale shading is not allowed (yet)

Drawings Copyright 2015 Polson IP Law 13

You 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 Law 14

Drawings Copyright 2015 Polson IP Law 15 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 so can be costly

Wire form drawings Copyright 2015 Polson IP Law 16

Claiming part of an article Copyright 2015 Polson IP Law 17 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.

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The parts in broken lines do not have to be connected Copyright 2015 Polson IP Law 19

In re Owens (Fed. Cir. 2013) Copyright 2015 Polson IP Law 20

In re Owens (Fed. Cir. 2013) Copyright 2015 Polson IP Law 21

Partial article Copyright 2015 Polson IP Law 22

Using Broken lines Copyright 2015 Polson IP Law 23

Using broken lines Copyright 2015 Polson IP Law 24

Using broken lines Copyright 2015 Polson IP Law 25

Using broken lines Copyright 2015 Polson IP Law 26

Using Broken Lines Copyright 2015 Polson IP Law 27

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Prosecution of the application Copyright 2015 Polson IP Law 29 Multiple 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

Pacific Coast v. Malibu Boats Copyright 2015 Polson IP Law 30

Pacific Coast v. Malibu Boats Copyright 2015 Polson IP Law 31

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 2015 Polson IP Law 32

Industrial Designs overseas Copyright 2015 Polson IP Law 33 Industrial 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 document Never assume anything-for example in Japan the design patent for an actual car would not be infringed by a toy car Most other countries have very different copyright laws, always ask about what is covered

Industrial Designs overseas Copyright 2015 Polson IP Law 34 The Hague Protocol may be a good way to save costs filing ID’s overseas, but make sure you know what your doing with the drawings for each country The ways different countries interpret disclaimed subject matter can be radically different, even within Europe Find competent design counsel in each country of interest!

Copyright 2015 Polson IP Law 35 Thank you!