Design Patents: Recent Developments and Practical Strategies

1. Design Patents: Recent Developments and Practical Strategies Joe Barich Tomas J. Wimbiscus Troy A. Groetken McAndrews, Held & Malloy

2. Design Patents • Basics of Design Patents • The Egyptian Goddess Case • Prosecution Statistics For DPs • Expanding DP Claim Coverage

3. Design Patent Basics • Typical “patent” is a utility patent • Directed to functionality – how something “works” • A Design Patent is directed to the ornamental appearance of an industrial article • How the product “looks,” not how it “works”

4. Design Patent 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.

5. Design Patent Basics • Unlike utility applications, DPs are not published • Presumption of validity • Term – 14 years from date of ISSUANCE • No maintenance fees

6. Design Patent Basics • Can claim priority to a foreign application (6 months) • No priority claim to a provisional application • Can claim priority to prior utility application • No RCEs, but continuations OK

7. Design Patent Basics • Default claim: “The ornamental design for X as shown and described” • Drawings are the true measure of the claims • Portions in solid lines are part of the claimed design • Portions of the drawing in broken lines are not part of the claimed design.

8. Design Patent Basics • “Ornamental Appearance” • Shape • Surface Ornamentation • Color • Combination of all three • Does the patented design include design choices or is the appearance dictated solely by function? (Rosco, Inc. V. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002)

9. Design Patent Basics • D440,149 • “Nut” • Can still be a functional article • Only needs some ornamental appearance

10. DP Infringement – Ordinary Observer • If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other • Gorham Co. v. White, 81 U.S. 511, 528 (1871) • Thus, if someone would confuse your product for the patented product, you are in trouble.

11. DP Infringement – Point of Novelty Test • But what about practicing the prior art? • “No matter how similar two items look, the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.” • Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) • Thus, even if someone would confuse your product with the patented product, as long as you are only practicing the prior art, you’re OK. • Must satisfy both the OO Test and the PON Test

12. Egyptian Goddess • D467,389 – “Nail Buffer” • Egyptian Goddess v. Swisa ‘389 Patented Design Accused Design

13. Egyptian Goddess • Huge amount of prior art • EG argued that the PON was the combination of • open and hollow body • square cross-section • raised rectangular pads • exposed corners • Defendant Swisa argued that the PON was the combination of 5 elements - the 4 above plus: • a fourth side without a pad (which was not in the Swisa product)

14. Egyptian Goddess • District Court – Swisa product does not include the PON, therefore no infringement • Fed. Cir. Panel – DC is correct, no infringement • Fed Cir. En Banc – (Sept. 22, 2008) Point of Novelty Test is Eliminated! But Still No Infringement!

15. Egyptian Goddess- Fed. Cir. En Banc • “Sliding Scale” • There is infringement if, in the eye of the ordinary observer, the accused design is closer to the patented design than it is to the prior art • Result - The elimination of the PON Test greatly increased the scope of the claims of a DP because the claims are no longer limited to the PON.

16. Why You Should Care About DPs • Drastic increase in issued DPs • USPTO 1998 - 11,478 • USPTO 2008 - 25,565 • Strong enforcement options • Can even seek exclusion order at the International Trade Commission (ITC) • Can mesh with other IP including trade dress

17. Most DPs are Issued By the USPTO • For Issued DPs • About 75% issued without a rejection • About 96% issued without a final rejection • Note: Finally rejected apps may represent 20% - not on chart

18. DPs Issue Fairly Quickly • On average 14 months to issuance if no rejection • On average 23 months to issuance if rejected

19. DPs Are Widely Sought • US D599,372 • Google Home Page Design • Issued Sep 1, 2009

20. Ex - Expanding DP Claim Coverage • D580,757 • November 18, 2008 • Graduated Dispensing Cap

21. Ex - Expanding DP Claim Coverage • D595,574 • July 7,2009 • Recall - Broken lines are not part of the claim

22. Ex - Expanding DP Claim Coverage • Allowed Application • Again, broken lines are not part of the claim • Very broad claim

23. Ex - Expanding DP Claim Coverage • Few claim limitations remain

24. Missed Opportunities • However, lots of applicants miss broadening • D440,149 • “Nut” • Solid lines are part of the claim • Are they all necessary?

25. DP Options • D599380 • “Compression” • Whirlpool Brazil • Portion of interest appears to be head piece

26. Design Patents Summary • More and more DPs are issuing • Most DPs that are filed proceed to issuance – and typically quickly. • Easier to find infringement of a DP after Egyptian Goddess • Claim coverage can be quite large and/or can be expanded– especially if the design patent is prosecuted correctly

27. Joe Barich Tomas J. Wimbiscus Troy A. Groetken McAndrews, Held & Malloy 312-775-8194 jbarich@mcandrews-ip.com Thank you!