Design Patent Presentation

‘01, ’02, Max Ciccarelli

Max CiccarelliMax Ciccarelli

Taking Taking Design Design

Patents to Patents to the Next the Next

LevelLevel max@[email protected]


Examples of Design PatentsExamples of Design Patents

AutomotiveElectronics

Footwear

Firearms

FoodClothing

High Tech Manufacturing

Telecom

Semiconductor Devices

Bottles

Sporting Equipment

House wares

Software

’01, ‘02, Max Ciccarelli

ElectronicsElectronics


AutomotiveAutomotive


FootwearFootwear


FirearmsFirearms


FoodFood


ClothingClothing


High Tech ManufacturingHigh Tech Manufacturing


TelecommTelecomm


Semiconductor DevicesSemiconductor Devices


Poison BottlesPoison Bottles


Sporting EquipmentSporting Equipment


House waresHouse wares


Computer DisplaysComputer Displays


OutlineOutline

nn BasicsBasicsnn Broadening ProtectionBroadening Protectionnn Shortening the ApplicationShortening the Applicationnn Miscellaneous TipsMiscellaneous Tipsnn Computer DisplaysComputer Displaysnn PhotographsPhotographs


Who can get a design patent?Who can get a design patent?

nn “Whoever invents any new, original and “Whoever invents any new, original and ornamental design for an article of ornamental design for an article of manufacture”manufacture”

35 U.S.C. 17135 U.S.C. 171


What does a design patent protect?What does a design patent protect?

The:

n shape, n surface ornamentation, or n a combination of each,

which is embodied in or on an article of manufacture.

See 35 USC 171; see also Gorham Mfg. Co. v. White, 81 U.S. 511, 525 (1872); In re Blum, 153 USPQ 177, 180 (CCPA 1967).


Test for InfringementTest for Infringement

n Whether an ordinary observer, n giving such attention as a purchaser

usually gives, n finds the alleged design to be

substantially similar to the patented design.


The Design Patent ApplicationThe Design Patent Application


The SpecificationThe Specification

nn “No description, other “No description, other than a reference to the than a reference to the drawing, is ordinarily drawing, is ordinarily required.”required.”

37 C.F.R. 1.153(a)37 C.F.R. 1.153(a)


The ClaimThe Claim

nn The ornamental design for a _________, as The ornamental design for a _________, as shown and described.shown and described.

37 C.F.R. 1.153(a)37 C.F.R. 1.153(a)


Title, Claim, and SpecificationTitle, Claim, and Specification

Title

Claim

Spec.


The First Design PatentThe First Design PatentNovember 19, 1842November 19, 1842


Broadening ProtectionBroadening Protection



nn Broken linesBroken lines

nn Multiple applicationsMultiple applications

nn EmbodimentsEmbodiments


Use of Broken LinesUse of Broken Lines

nn The two most common uses of broken lines The two most common uses of broken lines are to are to –– disclose the disclose the environmentenvironment related to the claimed related to the claimed

design design –– and to define the and to define the boundsbounds of the claim.of the claim. . . . . . .

nn A broken line showing is for illustrative A broken line showing is for illustrative purposes only and purposes only and forms no part of the forms no part of the claimed designclaimed design or a specified embodiment or a specified embodiment thereof.thereof.

MPEP 1503.02MPEP 1503.02



EnvironmentEnvironmentEnvironment



EnvironmentEnvironmentEnvironmentA broken line showing is for A broken line showing is for illustrative purposes only and illustrative purposes only and forms no part of the claimed forms no part of the claimed designdesign or a specified or a specified embodiment thereof.embodiment thereof.



EnvironmentEnvironmentEnvironment



BoundsBoundsBounds


What not to doWhat not to do

Elmer v. ICC67 F.3d 1571(Fed. Cir. 1995)


What not to doWhat not to do

Keystone v. Westrock997 F.2d 1444(Fed. Cir. 1993)


Better?Better?


Use of Multiple ApplicationsUse of Multiple Applications

Des. 356,757

Des. 363,561

Des. 356,772



Des. 291,144 Des. 299,583


Multiple EmbodimentsMultiple Embodiments

nn It is permissible to illustrate more than one It is permissible to illustrate more than one embodiment of a design invention in a single embodiment of a design invention in a single application. However, such embodiments may be application. However, such embodiments may be presented presented only if they involve a single inventive only if they involve a single inventive conceptconcept and are not and are not patentably patentably distinct from one distinct from one anotheranother. Embodiments that are . Embodiments that are patentably patentably distinct distinct over one another do not constitute a single over one another do not constitute a single inventive concept and thus may not be included in inventive concept and thus may not be included in the same design application.the same design application.

MPEP 1504.05MPEP 1504.05


EmbodimentsEmbodiments


Shortening the ApplicationShortening the Application

(and saving money on draftsman fees)(and saving money on draftsman fees)


“Mirror” Images“Mirror” Images


Showing half the designShowing half the design


Miscellaneous TipsMiscellaneous Tips

PositionsPositionsDetailsDetails

Software DisplaysSoftware Displays


Different positionsDifferent positions


DetailsDetails



n Old law (early 1990s): icons and typefaces not deemed to be articles of manufacture.

See e.g., Ex pane Strijland, 26 USPQ2d 1259, 1262 (BPAI 1992)(computer icon alone is merely surface ornamentation)

n New law (post 1996): the designs on these items can be claimed by stating that the design is displayed on an article of manufacture (e.g. computer icon on a computer display).



1988 1989 1990 1991 1992 1993 1994 1995 1996 1997 1998

PTO: Icons without representation of computer screen O.K. (Two Xerox applications allowed)

PTO: Stopped issuing patents for computer generated icons

PTO: Guidelines for Examination of Design Patent Applications for Computer Generated Icons



n PTO Guidelines: – “Computer-generated icons are designs within

the meaning of 35 U.S.C. 171, but must be embodied in an article of manufacture to satisfy the statute.”

– “computer screen monitor, other display panel or a portion thereof” necessary to meet the article of manufacture requirement.


Use of PhotographsUse of Photographs


PhotographPhotograph


Photograph Photograph –– too much detail?too much detail?


Photograph Photograph –– too little detail?too little detail?


Drawing Drawing –– just right?just right?


Drawing Drawing –– just right?just right?

Claimed elements


Illustration OptionsIllustration Options

nn DrawingsDrawings–– Black InkBlack Ink [37 C.F.R. 1.84(a)(1)][37 C.F.R. 1.84(a)(1)]

–– ColorColor [37 C.F.R. 1.84(a)(2)][37 C.F.R. 1.84(a)(2)]

nn PhotographsPhotographs–– Black and WhiteBlack and White [37 C.F.R. 1.84(b)(1)][37 C.F.R. 1.84(b)(1)]

–– ColorColor [37 C.F.R. 1.84(b)(2)][37 C.F.R. 1.84(b)(2)]


Requirements for PhotographsRequirements for Photographs

Photographs are acceptable only in Photographs are acceptable only in applications in which applications in which

the the invention is not capable of being invention is not capable of being illustratedillustrated in an ink drawing in an ink drawing oror

where the where the invention is shown more clearly invention is shown more clearly in a photographin a photograph (e.g., photographs of (e.g., photographs of ornamental effects are acceptable).ornamental effects are acceptable).

MPEP 1503.02MPEP 1503.02


Photograph vs. DrawingPhotograph vs. Drawing


Requirements for PhotographsRequirements for Photographs

nn Color photographs and color drawings are not Color photographs and color drawings are not permitted in design applications in the absence of a permitted in design applications in the absence of a grantable petition pursuant to grantable petition pursuant to § 1.84(a)(2). 1.84(a)(2).

37 C.F.R. 1.15237 C.F.R. 1.152

nn Photographs submitted in lieu of ink drawings must Photographs submitted in lieu of ink drawings must comply with 37 CFR 1.84(b). However, the comply with 37 CFR 1.84(b). However, the requirement of 37 CFR 1.84(b)(1) for a petition, requirement of 37 CFR 1.84(b)(1) for a petition, petition fee, and three sets of black and white petition fee, and three sets of black and white photographs has been waived, and only one set of photographs has been waived, and only one set of black and white photographs is now required.black and white photographs is now required.

See 1213 O.G. 108 (Aug. 4, 1998), 1211 O.G. 34 (June 9, 1998), See 1213 O.G. 108 (Aug. 4, 1998), 1211 O.G. 34 (June 9, 1998), and MPEP 1503.02.and MPEP 1503.02.


New MatterNew Matter

nn Removing OR Adding detail in the Removing OR Adding detail in the drawings can result in a “new matter” drawings can result in a “new matter” rejection.rejection.

nn Practice tip: do not use informal drawings.Practice tip: do not use informal drawings.


Utility vs. DesignUtility vs. Design


Utility vs. Design PatentsUtility vs. Design Patents

18 mos.18 mos.24 mos.24 mos.Avg. Avg. pendencypendency

Up to 6 mos.Up to 6 mos.Up to 1 yr.Up to 1 yr.Foreign PriorityForeign Priority

NoNoYesYesPCTPCT

NoNoYesYesMaintenance Maintenance FeesFees

14 yrs from 14 yrs from GrantGrant

20 yrs from 20 yrs from FilingFiling

TermTerm

DesignDesignUtilityUtility


Searching for Design PatentsSearching for Design Patents

(And an example of a missed (And an example of a missed opportunity)opportunity)


Design Patent Searching Design Patent Searching -- USPTOUSPTO


E.g. E.g. –– Ruger Ruger design patentsdesign patents


Ruger Ruger –– 11 design patents11 design patents

E.g. Rifle

Pistol barrelHandgun grip

RevolverPistol

E.g. Rifle

Pistol barrelHandgun grip

RevolverPistol


Others Others –– no firearm design patentsno firearm design patents

No firearm design patentsNo firearm design patents


Beretta Beretta –– missed opportunity?missed opportunity?

Beretta Taurus(Knock-off)


Ruger Ruger –– good use of design patentgood use of design patent


SummarySummary

nn Broadening ProtectionBroadening Protection–– Broken linesBroken lines–– Multiple applicationsMultiple applications–– EmbodimentsEmbodiments

nn Shortening the ApplicationShortening the Application–– “Mirror” Images“Mirror” Images–– Showing half the designShowing half the design

nn TipsTips–– Different positionsDifferent positions–– DetailsDetails

nn PhotographsPhotographs


Max CiccarelliMax Ciccarelli

THOMPSON & KNIGHT L.L.P.THOMPSON & KNIGHT L.L.P.max@[email protected]

Taking Taking Design Design

Patents to Patents to the Next the Next

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Design Patent Presentation

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Transcript of Design Patent Presentation