The Revival of the Design PatentThe Revival of the Design Patent A L k t D i P t t d th A Look at...

The Revival of the Design Patent

A L k t D i P t t d th A Look at Design Patents and the Implications of Apple v. Samsung

Brian MoriartyBrian MoriartyMary Lou Wakimura

Darrell WongDarrell WongApril 24, 2013

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Apple, Inc. v. Samsung, Electronics, Inc., et al.USDC – Northern District of CaliforniaUS C o e s c o Ca o a

Case No. 11-CV-01846

Is the Overall Appearance of the Product Substantially the Same as the Design?y g

What can a Design Patent mean . . .What can a Design Patent mean . . .

To New Balance? To IBM? To your company?

Design Patent Protectionfor Consumer Productsfor Consumer Products

In many consumer products (e.g., products within the footwear and apparel industry) the purely visual aspects of pp y) p y pthe design of the product may be a key feature of its appeal

Short shelf-life for many consumer productsy p– Design patent protection is quicker and cheaper– Utility patent application directed to technology within a product might

not issue until after product is no longer on sale

Danger from counterfeit products that appropriate look of a product

C t f it d t ll d t i l d th lit f – Counterfeit product generally do not include the same quality of materials, workmanship and technology as the original product

– Design protection provides an additional weapon to use in defending against counterfeiting, especially where utility patent protection is not a ailableavailable

New Balance Minimus 10 Trail

Warrior Sports Home and Away Kitsfor Liverpool F.C. 2012/13for Liverpool F.C. 2012/13

OHIM Community Design Number: 001328231-0003Number: 001328231-0004

OHIM Community Design Number: 001328231-0001Number: 001328231-0002


Design Patent D602,143

The Product

Design Patents for Software ProductsDesign Patents for Software Products

Part of a holistic approach including pp gCopyright, Utility Patents, Trademarks, Trade Secrets and Design Patents

“graphic designs” - Computer-generated Icons (MPEP 1504.01(a))Consumer vs “Non Consumer” products Consumer vs. Non-Consumer products

Apple's D604,305 patent - “Graphical User Interface For A Display Screen Or Portions Interface For A Display Screen Or Portions Thereof”

General Principles forC G dComputer-Generated Icons

Must be a non-functional element of design on gan “article of manufacture”

Patentability is reviewed by examining the overall appearance of the article, not individual element-by-element analysisInfringement is analyzed using the “ordinary Infringement is analyzed using the ordinary observer” test – whether the overall appearance of the patent and accused design are substantially the same in the eyes of an ordinary observer in light of the prior art Egyptian Goddess, Inc. v. Swisa, Inc. 543 F.3d Egyptian Goddess, Inc. v. Swisa, Inc. 543 F.3d 665 (Fed Cir. 2008)

Apple D604,305 (2009) IBM D424,544 (2000)

IBM D449,837 (2001)

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Microsoft D675,221 (2013)

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Questions?Comments?


Design Patent No. D384,190 The Product

Pharmaceutical Design PatentsU.S. Design Patent No. D380,825 U.S. Design Patent No. D671,636

U.S. Design Patent No. D640,366 U.S. Design Patent No. D640,366

Considerations When Preparing D i f D i A li tiDrawings for Design Applications

Black Line Drawingsg– Design patent applications are usually filed with

black line drawings.Can broaden the scope of the claimed design– Can broaden the scope of the claimed design.

– Codes for a limited number of colors available.

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Considerations When Preparing D i f D i A li ti

Photographs

Drawings for Design Applications

g p– Black and white photographs

acceptable in limited circumstancescircumstances.

– Color photographs or drawings can be submitted drawings can be submitted with a petition.

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Views


– Recommend filing drawings with at least one perspective view, as well as top, bottom, front, back right and left side viewsback, right and left side views.

– An application with an insufficient number of views can be rejectedviews can be rejected.

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Formal Drawings


g– Recommend filing design applications with formal

drawings.

– I use a draftsperson experienced in preparing design patent drawings.

– For U.S. applications, draftsperson can add appropriate surface shading to formal drawings.

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Informal Drawings


g– Applications can be filed with informal drawings.

– Typically informal drawings not recommendedTypically, informal drawings not recommended.

Phantom Lines– Phantom (dotted) lines can be used to show

unclaimed features of the design, or show the environment of the design.

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Number of Designs in Application


g pp– Usually file one design per patent application.

Can have multiple embodiments of the same design in one applicationdesign in one application.

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Proper or Improper Drawing?

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Questions?Comments?

Is the Overall Appearance of the Product Substantially the Same as the Design?


y g

Patent StrategyPatent Strategy

Consider cost and time differencesbetween Utility patent application and Design patent application

Do not use a Provisional application as the first filing for protecting a design inventionfirst filing for protecting a design invention

B f h li iti th Titl i i Be aware of how limiting the Title is in a Design application

Questions?Comments?


Design PatentNo. D537,098

The Product

Is the Overall Appearance of the Product Substantially the Same as the Design?

Design Patent No 617 720 The Product

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Design Patent No. 617,720 The Product

Questions?Comments?

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