Companies often seek broad protection for their products and technology, along with strong enforcement provisions, preferably available at a relatively low cost and via a relatively fast procedure. In the past, however, companies have often overlooked a tool that can provide such protection: the US design patent. Instead, companies have focused on trade dress protection and utility patents. In many companies, the trade mark department considered design patents to add little to trade dress protection, while the patent department considered them an inadequate tool to protect their functional inventions. As a result, design patents often fell through the cracks.
The USPTO seemed to take the position that, in these “rare situations,” the inventor may not have had possession of the newly claimed design because the claimed subset of elements was “seemingly unrelated” to the original design. Some members of the public attending Design Day raised concerns regarding the Office’s position.
Design protection has recently taken the spotlight due to some high-profile, high-stakes cases. Join these panelists for a practitioner-focused overview of design rights, where they will look into: why design patents require a different perspective from utility patents; what the most successful approaches are in prosecuting and litigating design patents; whether the approach to design rights in the U.S. is different from other countries undergoing such a surge.
In the complaint, Mulch requested a Declaratory Judgment of patent non-infringement and invalidity of two design patents owned by Novel, US D640,268 (’268) and US D654,191 (’191), both directed to flexible landscape edging.
A CPA is typically filed when prosecution on the merits is closed in a design patent application. For example, after the Examiner issues a final rejection in a design application, the Applicant may file a CPA in order to continue prosecution in front of the Examiner, instead of appealing the final rejection to the Patent Trial and Appeals Board. A Request for Continued Examination (RCE) is not allowed in a design patent application.