Coming out of the dark ages

About 12 years ago, in 2002, I co-authored an article entitled “U.S. Design Patents: an underdog that bites.” The article announced a coming-out stage for design patents:

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.

Today, however, companies are starting to realize that design patents can provide valuable protection, not only for products traditionally protected by trade dress, but also for inventions traditionally protected by utility patents ... .

Since then, the number of design patent applications filed has continued to grow steadily, with a short lull following the 2008 economic downturn.  More importantly, the number of design patents asserted in litigation has increased, leading to a surge in decisions from district courts, the CAFC and the ITC.  This recent case law has helped modernize design patent jurisprudence to some degree. 

The Egyptian Goddess case of 2008 eliminated an outdated point-of-novelty test.  The Crocs ITC cases showed that design patents could be powerful weapons against importations of infringing goods.  The on-going Apple v. Samsung case provided a real and modern-world example highlighting the unique advantage of design patent law which provides for damages based on an infringer’s profit.  Earlier this year, the CAFC confirmed in Pacific Coast Marine Windshields v. Malibu Boats that the same principles of public notice underlying prosecution history estoppel apply to design patents as well as utility patents.  These decisions and others probably would have pleased the late Judge Rich, who was often supportive, respectful and careful in his decisions related to design patents.

However, much is still needed in order to fully modernize the law of ornamental designs.  As judge Rich lamented in 1981, “the concept of unobviousness is not well suited to ornamental designs” and “[i]t is time to pass [a legislation] and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office.” In re Nalbandian (CCPA 1981).  Congress has not followed that advice.  As a result, courts still struggle with evaluating non-obviousness for ornamental designs.

Another area that needs clarification is the application of the written description requirement to design patents.  The recent USPTO proposal and the opposing comments filed by the bar illustrate the challenge.

Another blatant area of confusion is claim interpretation.  Should a court verbalize or merely visualize claim construction?  Should a claim to a design be construed differently depending on whether the court is addressing invalidity or infringement?  What is the role of functionality in claim construction?  Should the 2010 case Richardson v. Stanley Works be followed or distinguished?  Functionality itself, as an invalidity ground, i.e., lack of ornamentality, could use a dust off.  Too many important markets are at stake, including those for replacement parts.

But perhaps the most significant change that is needed, in order for design patent law to mature, is a change in mentality.  Too many decisions result from courts’ “judicial hunches,” as Judge Rich called them.  Some courts still disrespect design patents, and summarily judge based on their personal views, without much reliance on the evidence of record, that the claimed designs are either not novel, obvious, or not infringed.  Perhaps the simple nature of the claimed subject matter (a bottle, a phone, a shoe, etc.) induces some judges to skip the record, ignore experts, short-circuit the fact finders, grant summary judgments by paying only lip-service to the established legal tests, and quickly get a case off their busy docket.


Written Description – Where do we go from here?

As previously reported, the USPTO published on February 6, 2014, a Request for Comments on the Written Description Requirements for Design Applications.  The Request followed a heated discussion during Design Day 2013 when USPTO Design Practice Specialist, Mr. Joel Sincavage gave specific examples illustrating an original design claim and an amended design claim where, in the amended claim, only a subset of elements of the original disclosure were shown using solid lines.

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. 

In response to these concerns, the USPTO issued the Request for “comments on the application of the written description requirement where only a subset of elements of the original disclosure are shown using solid lines in an amendment or in a continuation application.” In its Request, the Office proposed the following factors to “only be applied by design examiners in the rare situation where there is a question as to whether an amended/continuation design claim satisfies the written description requirement:

(1) The presence of a common theme among the subset of elements forming the newly identified design claim, such as a common appearance;

(2) the subset of elements forming the newly identified design claim share an operational and/or visual connection due to the nature of the particular article of manufacture (e.g., set of tail lights of an automobile);

(3) the subset of elements forming the newly identified design claim is a self-contained design within the original design;

(4) a fundamental relationship among the subset of elements forming the newly identified design claim is established by the context in which the elements appear; and/or

(5) the subset of elements forming the newly identified design claim gives the same overall impression as the original design claim.”

A round-table was held by the Office on March 5, 2014, during which most members of the public voiced their opposition to the proposed guidelines and factors.  Criticisms included the non-compliance of the proposed guidelines with judicial precedent, the uncertainty created by the factors, and the potential loss of flexibility for all applicants while addressing “rare situations” where an applicant might be trying to game the system.

The window for comments closed on March 14, 2014.  Of note, The IPO and the AIPLA submitted comments strongly opposing the new guidelines and factors.

In its comments, the IPO advocates the status quo, relying on the 1989 en banc Federal Circuit decision in Racing Stroller.  In this case, the Court applied a simple visual test for determining compliance with the written description requirement.  If the claimed design is “depicted” in the earlier drawings, then the requirement is met. 

Nevertheless, the IPO considered a rule change to address the USPTO’s hypothetical checkered board scheme, where the original drawing is a grid of squares shown in solid lines and the amendments consist of selections of some of the squares forming designs such as a cross, an X, etc.  The IPO proposed the following test to address this rare and academic situation, which seems to concern the Office so much:

An amended design patent claim may not have written description support in the original disclosure when a designer of ordinary skill would not recognize any relationship between the claimed design and the original disclosure.

Of interest, the IPO proposal ties the test to a designer of ordinary skill in the art.  This connection should allow applicants to submit expert declarations in support of their position that the amendments are supported by the original disclosure.

The AIPLA also opposes the USPTO’s proposed factors.  The AIPLA points to the uncertainty created by these new factors and their inconsistent application by the Office.  The increase in the size and cost of preparing design applications as a result of this uncertainty is another stated reason for opposing the USPTO proposal. The AIPLA thus “urges the Office to adopt the following Examination guideline as an alternative to the factors suggested in the Request:

an amended claim that does not add subject matter to the original disclosure or remove subject matter claimed in the original disclosure satisfies the written description requirement unless the amended claim introduces a claimed element not “reasonably discernible” from the original disclosure.”

The AIPLA adds explanations regarding the meaning of adding and removing subject matter when changing solid lines to broken lines.  The Association also emphasizes several concerns about each of the factors proposed by the USPTO.

So, where do we go from here? 

The USPTO has agreed to review the comments submitted and may issue another Federal Register notice relating to the written restriction requirement.  In the meantime, Design Day 2014 will be here next week, and we may hear more on this topic from the USPTO on this occasion.  We will attend this annual event and report its highlights here on our blog.


ABA-IPL: April 2-4, 2014

The American Bar Association (ABA)’s Section of Intellectual Property Law (IPL) will be holding its 29th Annual Intellectual Property Law Conference on April 2-4, 2014, at the Crystal Gateway Marriott Hotel, in Arlington, VA.  Of interest, on April 3rd at 1:45, conference participants will be able to attend a workshop entitled “The Rise of Design Protection: From Spoons & Carpets to Smartphones & Cars.” The ABA-IPL published this summary for the workshop:

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.

The workshop will be moderated by Sarah Burstein, Professor at the Oklahoma University School of Law, Norman, OK.  The speakers will include:

Philippe Signore, Oblon Spivak, McClelland, Maier & Neustadt, LLP, Alexandria, VA

Damin Porcari, Ford Global Technologies, Dearborn, MI

Andrew Rawlins, Foley & Lardner LLP, Washington, DC

We hope to see you there!



The State Intellectual Property Office of China (SIPO) recently issued an order indicating that design patent protection for Graphical User Interfaces (GUIs) will soon be available in China.  The order, which provides amendments to a number of sections of the Guidelines for Patent Examination, follows as an update to a previously released draft amended version of the Guidelines for Patent Examination, and becomes effective on May 1, 2014.

Notably, designs directed to human-computer interactable GUIs, including dynamic or animated GUIs, will be protectable.  However, the new provisions exclude protection for designs not directed to a product’s function or human-computer interaction, such as wallpaper on an electronic screen, turn-on/turn-off screens and graphical layout and text of a webpage. 


Mulch v. Novel - Request for Declaratory Judgment

International Mulch Company, Inc. (Mulch) filed a complaint requesting declaratory judgment against Novel Ideas, Inc. (Novel) in the Eastern District of Missouri Eastern Division on March 11, 2014 (4-14-cv-00446).

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.

Mulch stated that it began selling a lawn edging product to Lowe’s, and that Novel allegedly took the position that Mulch’s lawn edging product infringed the ’268 and ’191 patents.  Mulch further stated it had informed Novel that its product did not infringe Novel’s patents, and argued the ornamental design of their product differed from Novel’s patented design due to the product having an “appearance of variable sized cobblestones,” “a squared-off top,” “three holes for stakes,” and a “rounded inside corner.”

Figure 1 of the ‘268 patent is reproduced below:

In the complaint, Mulch stated Novel had allegedly “on information and belief, communicated directly to Lowe’s, taking the position that the [Mulch] lawn edging product being sold by Lowe’s infringe[d] the 268 Patent and the 191 Patent.” Mulch declared “apprehension that Novel will commence litigation” against Mulch and/or Lowe’s.

Mulch argued non-infringement of both the ’268 and ’191 patents, and stated that the alleged allegations of patent infringement “have placed a cloud over [Mulch’s] business, … are likely to cause [Mulch] to lose revenues and business opportunities, … and will likely cause irreparable injury to [Mulch].” Mulch further argued invalidity of both the ’268 and ’191 patents “due to functionality.”

In its prayer for relief, Mulch requested that Novel be prevented from “interfer[ing] in any way with [Mulch’s] manufacture, use, offer for sale, or sale of [Mulch’s] lawn edging product. A trial by jury was requested.

This case is ongoing.