Speaker 1  0:00  
Good afternoon. Good morning. Good evening, everyone. Welcome to design patent tips and tricks where to start presented by Autumn. My name is Holly Lundgren autumns online professional development manager. And I will be your staff host for today. All lines have been muted to ensure high quality audio, and today's session is being recorded. If you have a question for the panelists, we encourage you to use the q&a feature rather than the chat feature. If you have a technical question or comment, please do feel free to use the chat feature for that. I'd like to take a brief moment just to acknowledge and thank autumns 2020. Online Professional Development sponsors, we appreciate your ongoing support.

Speaker 1  0:51  
I will now introduce our moderator, who will in turn introduce our panelists. Megan Antos is a commercialization manager with the commercialization Epi Center at University of Louisville. In this role, her primary responsibilities include assessing, managing and licensing intellectual property. In addition, Megan helps with the management of the kinetic grant for the regional institutions in Kentucky. Before joining joining the team at U of L. Megan obtained her undergraduate degree in Biomedical Engineering from Case Western Reserve University, received a master's in bioengineering from the University of Utah and earned a PhD in Biomedical Engineering from Colorado State University. She has previously served as a licensing analyst and licensing manager at Ohio State University. And now I will turn it over to our distinguished panel. welcome Megan Bryan biodh, and Randy Beth.

Speaker 2  1:53  
Hello, everyone. Thank you, Holly, for that introduction. And I'm very excited to be here with you all to talk about a topic that we as members of autumn don't know as much about and I wanted to open this as an opportunity for us to learn more about design patent. So I've assembled a panel of very bright people. Wendy Beth Isaac's is patent counsel for Emory University. Before working at Emory, she spent six years doing IP in Washington DC boutique firms. Wendy has experience with both domestic and foreign patent portfolios. And she received her Bachelor's in Biomedical Engineering from Tulane and her JD from the University of Maryland, joining Randy Byron Bowman from University of Central Florida, like Wendy Byun originally work in the private sector with Kaplan gamble. Before joining I can assistant director at UC X opposite tech plant. He has done a lot of work with both foreign and domestic patents, and has his JD from the University of Dayton, along with a Master's from the University of Georgia and a bachelor's in chemistry from University of South Alabama. And finally, in order to give an international perspective to this panel, we have invited Viotti EVO Phillips, from the University of Western Australia. And by God has his PhD in metrology and materials from the University of Birmingham, UK, as well as a first class honours degree in the same field from Nigeria. And by God is now a senior commercialization manager, where he advises on startups in intellectual property commercialization, and has also gotten experience with both domestic and foreign patent violence. So we're very excited to have all of us here on this panel today. And thank you to you all for joining to learn more about design patents.

Speaker 2  4:00  
So design patent is where form meets function. We talk a lot about utility patents with lawns put into them, but a design patent has a unique space where we can really focus on the form of an object. Next slide. So this is an example of a design pattern from Apple. And as we know, Apple has a massive portfolio of patent in this particular case, so they focused on the graphical user interface. So when we look at an iPhone, we know it's an iPhone, because things like the curvature of the phone design, or the circle that is at the bottom of the phone, but we also know what just based on the graphical user interface, the word of the icon look on a screen and where did the icon come shops have a slight curvature to the square shape? So this design pattern is something that has made billions of dollars, internationally and domestically. And here's an example of one way that you can protect your device using a loan and one claim which is specifically for the graphical user interface with the displays going. Next slide. So Bernie, I'm going to turn it over to you to talk a little bit more about USPTO design patent.

Unknown Speaker  5:29  
In the US a design patent is generally design patents a very narrow form of protection, but they can be very powerful, and design patents protect the way an article looks. The way the USPTO defines that is its defines a design is it a visual or a mental characteristic, embodied in or applied to an article for manufacture, an article manufacturer could be any manmade object, including in Computer icon, which we just saw in the last slide. And the subject matter or the ornamental appearance of design patent application can relate to the Configure, there's some examples are configuration or shape of the article, it could be related to the surface or mutation applied to an article or the combination of a configuration and surface ornamentation. This could be any, you could be applied to any functional material. Functional articles as well as computer computer display screens, what it is design pen is not as it compares to other forms of protection. It's not a utility patent, a utility pen is different is that utility pen covers a design patent will not provide no protection for functional features. It is not a copyright, in that it doesn't provide any protection for derivative works. What you see in the design patent is what your coverage is. So someone changes the design is considered a completely new design. Next is it's not a trademark. Because a design patterns it's unavailable for short words or phrases. Usually you'll see in a design patent that that trademark is actually blocked out using broken lines, which we'll discuss a little bit further in later slides. And if you have any questions a design patent application guide, the Patent Office provides a really good detailed describing the basics of what a design patent is as well as to how to file an application.

Unknown Speaker  7:42  
Next slide.

Unknown Speaker  7:45  
Some patentability requirements in the US like utility patents design patents have the bars the onsale bar and the one year disclosure bar, it is also examined in the US which is different than other systems, international systems that might have a registration. Some of the requirements for design patents is again it has to be an article manufacture design into are applied to a manmade object. And then again include any it could be a phone, it could be a display screen, usually that article manufacturer will be identified in the title. So you know what it pertains to, it needs to be original or novelty. So in the standard for that is an ordinary observer sees a design and not an already existing design. The next is a non obvious, that bar is a little bit different, a little bit harder in design role than utility, because at the time of the invention, would it the question is Would an ordinary dessert ordinary a designer of ordinary skill in the field of vention, consider combining the references to arrive at a single piece of art or modifying a single art reference for you to be able to combine two references in for design patterns, you need a primary reference and that primary reference, that reference must basically have all the same design characteristics to create the same visual expression as clean in the clean design. And it's quite difficult to find a primary reference to that shows all the features to then find a secondary reference. One example is is a credit card that had a hole in it. And a primary reference a credit card without a hole was not considered a primary reference. You had to the courts had said that you have to find a reference with a credit card with a hole which was a unique design at the time. So it's really obvious rejections are fairly rare in Design patents, then next requirements, unique design patterns is order mentality. And that's kind of standards of design cannot be dictated primarily by the function of the article. So you can have functional items where you have ornamental appearance. If you think of a phone, this phone features a phone is a functional article is an article of function, but you're covering the curvature of the corners, which is the ornamental appearance of that phone. An example of that is of a design that's dictated primarily by function is a key. The key, the key blades, or key teeth, has been held primarily functional, because that purpose of that key blade design is to match the keyhole. So that actual that design has a functional purpose as it meets a keyhole. So in that sense. So there are a handful of items that would be excluded. If they're considered primarily ornamental. If you do get you might see rejection in the patent office. But as long as you could demonstrate that you use you had used on mentality or consider on mentality in that design patent, you should be able to overcome that rejection. Next slide.

Unknown Speaker  11:31  
So the differences between a utility patent in the US, again, like what we said it's has similar requirements, there's similar bars of the onsale bar and the one your disclosure bar. But there's a lot of differences between designs and utilities. The first is it's 15 years from the issue date. That's a pretty recent change in the past several years, as a result of the US joining the Hague agreement before that that was 14 years. So because you have 15 years from issue date, we do not get patent term extension. But it's not necessarily needed. Since it's from the issue date. Another is no maintenance fees, which really makes it fairly cheap to get a design patent as once you get it you don't have to continually paying fees. The next is filing to assurance. So the time to get a design 100 significantly less than a utility, on average could be 12 to 18 months, I've seen Nick even get sooner in six months, or am I get a little bit longer depending on the backlog of the patent office. One thing that's unique and unique about design design patterns compared to utility, you have a six month priority versus a year priority requirement. So if you're going to file internationally, or file party to an international application, you have to consider that you have six months to claim that priority. The Another difference between utility and design is that you cannot claim party to a provisional application. You can if there is no provisional application design patents, you but you can claim priority to an existing design patent or utility application as a continuation or divisional like utilities. You just need to make sure there's support in the drawings for that. For that design. There is no pre grant publication, only time the pennant a design patent will publish is when it issues. So there is if you need to consider there might be about a year or two lag between what has been filed and what is publicly available. It's not included in the PCT system, but there is a similar system called the Hague system that the US just joined. But the consideration about the Hague system to note is that some countries are signatory to the PCT or not in The Hague system, for example, Australia. And as of 2020, The Hague system covers only 91 countries compared to 153 countries for the PCT. So, you should cannot assume that all PCT contracting companies are signatory to the Hague system. And also the consideration is not only you don't need to file through the Hague system, you can do through the Paris Convention, which means that you could file in the US and then go into the countries of interest like a utility application. The another big difference between utility and designs and this is that Apple really has taken advantage of is that you can get a remedy of total profits and in all the alternative a reasonable royalties. So you can get total profits for the sale of the article for manufacture from which the design is directed to. So that could be a huge advantage. In let's say. If you find a A potential infringer and the rewards of that, I guess, I think the next slide, I think it's going to

Unknown Speaker  15:12  
Ryan. That's correct. Thank you, Randy. So, as explained a little bit earlier, the types of innovations that you can file for design patterns. And so the most typical places that you're going to see them are commercially ready products. Medical devices, for instance, you know, the the look shape of a particular device. As we mentioned earlier, the GUI interfaces, you know, household goods, bring up a case later, it's car parts, you're looking at it in fashion, textiles, jewelry. So typically, for the university setting, probably a little bit different from the corporate setting is you're going to look at something that's more or less market ready. Most universities may may or may not have that at that particular point. So you may have to work with you know, particular licensees, for design patterns, and what's ultimately going to be the marketable product. Again, it's not going to cover the functionality or utility. And it's not after the aesthetic appeal. And so and it's not going after the method of creating a particular product, but only the the the actual design the the order mentality of that particular product itself. Next slide, please. So the different components of the design application, as we mentioned earlier, there's only going to be one claim. So this is a sample on the right hand side of what you'd see. So it'll have a title, which generally is just going to be a brief description, this one says keyboard, it's going to be a preamble section, which you typically see in a utility case, it's going to identify who the inventors are, the description of what it is the the application, filing dates, the typical things you'd see in a normal patent application, the crux of what you're going to see is going to be the drawings. Initial, you're gonna have a little bit of description of the drawings, typically, you're just gonna see something that says, You know what type of view it is, you know, and so depending upon how complex the article is, is depending upon how many different drawings you're going to need. And then you might have a disclaimer in there, so things that you would not claim as part of what's in that particular drawing, you would make some type of disclaimer in the in the application itself, to say that that's that's actually not part of what you're claiming. And then it's going to be a single claim, the single claim typically is going to be something along the lines of You know, for this one, it's a it's a keyboard design, keyboard layout, something along those lines, it's going to be very, very generic. And say what it is, and you know, as as depicted with the following drawings, and then the next part is going to be the crux of what you're going to need is going to be the drawings themselves. Next slide, please. So, as I said, The drawings are going to be the key component to the design case. This particular one, we chose a keyboard, and it shows a variety of components in there, and I'll kind of go through that one. So Solid lines. Pretty much in every country, solid lines are what's in considered in the claims, and what you're claiming as your particular design and is your particular invention. Some jurisdictions will allow you to add what we call broken or phantom lines. And those really depict either what's in the neighboring environment, you can potentially use those for other types of embodiments that you may want to claim later and put those into solid line drawings. There's a variety of different reasons for for putting broken lines in. In this particular case, you can see the broken lines are really around the edges of the keys themselves. So it's not the keys are important, because those are in solid, but the broken line the edges around them are not. And so again, you have to show sufficient number of views. And it really depends upon how complex you are, but typically you're going to See a top of bottom a left or right perspective front back. So normally, you're going to see a variety of different views. And I'm going to tell you from practice that that's where the cost is going to be for a design patent application is you want to make sure you have, it's not the attorney filing the case, you want to make sure you have a good draft person, or they're working with a good draft person that can make the drawings that you need. And that's really where the cost is going to be primarily for a design patent case.

Unknown Speaker  20:36  
Next slide, please. And Barry, this is turning this one over to you now.

Unknown Speaker  20:42  
Yes, thanks very much, Brian. So it is interesting that there are a couple of divergences from from the US. And the first one I'd like to talk about is terminology. So what is called design patterns in the US are called registered designs in the EU in the UK, and Australia. And in Canada, for example, they're called Canada and Japan, they're called industrial designs. So just be careful about that. So they don't trip you up. Next one there is next one I've got unless this duration, so duration of the terminal rights that you've got. So in a number of countries, it's up to 25, up to a maximum of 25 years. So for example, in the EU and in the UK, and in Japan, it's 20 years, and Australia and China is 10 years. Now, importantly, for you to be signatory to the existence, you've got to have a minimum of 15 years duration. So that would explain why Australia and China are not signatories to that system. And as Randy Beth mentioned, the US just joined the existence in 2015. And that was when the US also went to 15 years. Now next on my list is translation. So as you may be aware, with utility patents, you've got to translate, you know, when you go from country to country, it's sort of similar with registered designs as well. The only thing is, in the case of registered designs, if you use the X system, the International guru at WIPO old defect will conduct a translation for you. But you just have to file in a single language of your choice of either French, English or Spanish. So you find in any one of those languages and the International brew translate for you. Or you may choose to supply translation for them. But again, they will check it if it's correct or not. So you might as well let them find it for you translate it for you for free. Now, if you're filing via Paris Convention, as Randy Beth mentioned earlier, then you would have to translate as you go from country to country as required. So for example, if you are coming from a difference in non English speaking jurisdiction to file in Australia, our regulations require us to translate into English, if you had to file in Japan, for example, your front page would have to have been translated into Japanese. And next on my list is maintenance. Maintenance fees. So it is interesting that in the US there are no maintenance fees. But yes, please be aware in other jurisdictions or other jurisdictions that I'm aware of, you've got maintenance fees to be on whilst they're not as expensive, as you know, elsewhere. Sorry, they're not as expensive as utility patents, they are still, they're still fees to be paid anyway. And I'll touch on why the Hague, where I think when I mentioned when I discussed the existence, and I'll talk on you know how maintenance fees works work within the existence. Next on my list is that you can have multiple designs in the single application. So if it's a case, where you have multiple designs to be applied to a single to a single product, you can make the filing in the single application. But that does not apply in every country. So I believe that applies in the US, but for example, Japan does not allow that. So you need again to the to be careful about that. Next on my list is the claims slash the written description. So Bran Gray, took us through what a typical us application will look like. Now, most of those jurisdictions you don't have, you know, the laboratory in description. Neither do you have claims, or does anybody have a claim? And I'll just show a quick example here, which is a Samsung vacuum, vacuum cleaner head and you'll see that there's no you know, all the writing there. It's just saying things about the design application itself, but there is no written description as such. And neither is there any claim in Australia for example, all you need to write which again is optional. You may choose to do so. Applying what is called the statement of newness or newness and distinctiveness, or you may not. And I noticed while preparing for this, I was looking through Apple watch through Apple's design register designs in the EU for the Apple Watch. It was just a drawing, so there was nothing else to eat. Next one, please, is that also so you may have to get from jurisdiction to jurisdiction and this will vary. So in Australia, there's something that is called publication of your design. So it's not the design is not registered. And you may more or less viewed as similar to what obtained in the US pre AI, the United States that was a statutory invention registration. So it's sort of similar to that where you know, this design can no longer be registered. So all it does is asking the, your the patent office to publish this data it belongs to you. And then next day is registration and or substantive examination. So in most countries, what you would have a formalities examination. So essentially, they just check the documents in order. If they're not in Australia, particularly if they're in order, they register your design. But they've not substantively examined your design. Now you can choose to substantively examine that post the registration. And it's only after a substantive examination, if you do receive a certificate of examination that you can then sue people for infringement. So that's the benefits of going through the substantive examination process. Whereas countries like Japan, that happens automatically, once a year, so just be aware that it does not want to automatically now I have on my list there also registered or registered design, so in the gun had registered community designs and unregistered community designs. And they differ in scope, as well as duration of protection. So the registered community designs will give you up to 25 years, whereas the owner just according to these community design schemes, only three years of protection. And last but not least, is something that is now peculiar to Australia used to exist in the UK up until 2016. And I guess I'll touch on that probably later. But this is a really contentious issue. But I think simply put, it's contentious and complex. But I think the simplicity of it or the the easy way to explain it is that if you have a work in which copyright subsists once you use that copyrights in a design context, so I'll give you an example, she drew a kettle, for example, you automatically have copyright protection in that. Now, when you apply to register that drawing, as a design, can automatically lose your copyright protection. Now, if you did not apply to register the design, if you went and applied that design to, you know, applied it industrially, as it puts it in art, so by industrially, typically means that you've applied to applied into about 50 articles, once you do that, again, automatically lose the copyright protection. So for people fighting coming in from the US or from elsewhere, where you can have all this multiple, all these multiple protections in place, just be aware of that. And last but not least to mention is the existence versus the Paris Convention. So Randy Beth mentioned, quite rightly about, you know, the opportunity to fall through the system. Now, the Paris Convention gives you access to file directly in 177 countries, which is far more rich than the system that gives you just access that gives us access to just 91 countries. Now, I think in terms of strategy to depend on what it is you're willing what you're looking to achieve and what your particular circumstances are. So for example, if you were looking to protecting just one country, you're better off going via Paris, rather than trying to go through the existence because they exist then is, if you think of it like it's quite similar to the Madrid protocol, where you filed the single application and the application directs your, your application to different countries, the different countries nationality, decide whether or not they're granted rights. But once the rights are granted, you need to renew just through the central system and that's through WIPO. So it's sort of it's a procedural, I'd say procedural tool to make designs that you Sainz, registration and renewals make to make it easy.

Unknown Speaker  30:05  
Next slide, please. And in this next slide, I just want to go through an example of what we did at the University of Western Australia, again, to highlight the particular the popularity of the Australian system. So in the highlighter, what I've got is a statement of newness and distinctiveness. And this, this registered design is for Italy device. And you'll see that again. So this is these are the registered design, there is no, it's just a matter of newness and distinctiveness. There's no claim there's no laboratory to description. Once we found this neck, within a couple of weeks, we had the Certificate of Registration. If you click next click please. So that's a Certificate of Registration. Now, as I mentioned earlier, with the Certificate of Registration, we cannot sue for infringement. So for us to do that, because we are the licensee waiting in the wings, we then went. Next slide, please. Next click, we then went to request examination. And once it was examined, we then got the circuit of examination. And now we can turn to anyone who infringes our design for infringement. And then I'll turn it over to the next slide. Thank you.

Unknown Speaker  31:25  
So we actually had some interesting conversations here, because I don't think most of us understood all the differences between the US and the EU, foreign jurisdictions, in particular, what God had just mentioned about the overlap between copyright and designs in Australia, in the US, you can overlap and you can, you can put in as many of these different layers as you possibly want to. And I honestly would tell you that there's differences, the you have to consider kind of the difference between what you want to do with an IP protection, what you want to end up doing what the commercial, and I'll explain a little bit more here. So in general, you can file design cases in conjunction with utility patents. You know, again, you have to have support if you're going to claim priority. A lot of times I'm going to tell you from in a previous work that I did, the design cases came much further down the road when we're about to launch products, as opposed to the utilities which were much further upstream. Again, you can combine it with copyrights. So the difference is the designer is going to look at the order mentality versus the copyrights going to look at kind of more more the uniqueness and the work of authorship in embedded in within that. And then you can combine it with trademark, probably where you're going to see the most of it with trademark is going to be in the in the trade dress arena. As opposed to the what you traditionally think of a trademark when you're looking at a name in conjunction with something else. So and again, you can you can combine all these, for example, in the particular image on the side with an iPod, it's got several utility patents covering you know the function, the individual components within it, you can go design patents of the shape, you know, maybe the GUI, the buttons, again, you can even look at trademark for the trade dress, probably most people can can identify in an iPod on a shelf, I mean even even think of you know, similar Coke bottle a Gatorade bottle, most people can identify those. And so they really play in both both those arenas for the trade dress, as well as in the design patents. The reason I say that you need to really consider this upfront for IP protection. So there's there's two components, the IP protection is you you have a variety of options that could be made, that you can file and protect the different things the commercial side of it, you really want to look and see I mean ultimately you could license you know, a design, patent utility copyrights, trademarks all on the same license application. Same sorry, the same license agreement. Most of it, you might want to consider where the ultimate revenue will be generated off of if you've got a choice between the royalty stream coming off of a design and a copyright. You may look at the copyright this because the life of a copyright is going to be a lot longer than the life of the design pattern. So you may attribute may want to look at attributing where your royalty streams and the longevity of your agreement based upon the type of IP protection that you have. So those are two really separate different conversations. But they're things that you really need to consider when you're looking at multiple different layers of of IP protection. Next slide, please. Randy, I believe this one was you.

Unknown Speaker  35:28  
Sorry. So um, when I started Emory about 10 years ago, we did not we had never filed design patent. So when I came on board, we start evaluating our technologies to see if design patent protection would be a good choice. And like many universities, a lot of our technologies are early stage, not are necessarily market ready. So as a result of me being there, for 10 years, we've only filed about three, one of them was directed towards a user interface, just to get some sort of form protection since it was a database. For chemical compounds, using fairly simple software programs. It was just a way of organizing data, and with a utility pattern would be quite hard. So we filed a design patent. Another case, again, was, was to a surgical arm device. It's a support for your arm for during surgery. Again, we thought we could have gotten utility, but we've been quite narrow, so the value was quite questionable. So we decided to go design route. Those we don't know we have not yet licensed those, the one that we have was a combination product where we combined utilities and design patents, we use the utility to cover the materials that are used in a pod. And the pod is what we covered in a design pattern. And the product is still under development. So we're not quite we have not yet seen the full value of what that license will be. But it was one way to use design patents to cover consumable product that will be sold frequently in conjunction with utility. We also have considered when we file utility patents. If there is if we're thinking the design is pretty close to market, manufacturing, but we're not quite sure, we will consider including multiple drawings in our utility patent to provide support for a later filed design patent. We have not yet done that. But we do consider that one we are considering filing the provisional as well as the utility. The only caveat is you need to be you have to be careful not to create prior art for yourself. So if you think designs pretty close, but you're not quite sure. You need to decide whether it's going to be publicly disclosed the design and if it's necessary for the utility, and if so to ensure that you have support necessary for design patent in that utility application. And I think Byron might have some stories from the trenches as well.

Unknown Speaker  38:23  
Yeah, I do. So at UCF, I've filed offhand, I filed two design patents and a utility patent that went along with it. This one was for a shelf assembly, the person that developed it was to a shelf that would fit in like the quarter of a like a bathroom stall. So you'd have someplace to put down items when you travel in an airport or you go to a even think of a dressing room at a department store something so you don't have to put your your items down on on the floor. So we found a utility because we knew what it was it was actually actually hanging up and one of the departments at the time and we filed just before the year mark that had been out there. And we included like what Randy Bethan mentioned, we included all the drawings at that particular point in time. So we could claim a priority to the utility case. I think at the time, I really wasn't sure that we'd get the utility case allowed just because you can find hanging shelves, you know, go to Staples, go to, you know, any catalog that you can think of that you could find something and so we thought we'd have a real big uphill battle on that. We ended up getting the utility, but then we filed, we've got to issued design patents for that particular case, and I've licensed that out to a particular company that is manufacturing those, you know for the unit versity, it's probably more difficult because again, we're looking, the likelihood that we're going to have a product ready to go to market is going to be very difficult. There are a couple other faculty members that I've been having these conversations with for probably over five years now that have products, but they're looking to get to something that's probably either going to be, you know, market ready, looking at scaling the product, doing doing tweaks on designs, and so we haven't pulled the trigger on doing design patent applications yet for those. Formerly, when I was in house at Procter and Gamble, and this is a little bit different. I had a budget than unlimited budget to do whatever I needed to do, which most people at universities do not have. But we filed on razors, handles handle designs, and probably people think about it package designs. So not not the the idea that you're gonna get a utility case allowed on a new package is probably going to be very small. But a design pattern covering the package is probably unique. And again, if you look at it from a branding, you want it so that somebody could pick it off on a on a shelf and know what they're looking at. And so you're that's where you're gonna get the compliment with the trade dress as well. Barry, do you have any more to add to that?

Unknown Speaker  41:26  
Yeah, it's just I'll just quickly add to that. So the one I showed earlier, I was from a situation where we, in that particular instance, the part of the work had been published. So what could be patent protected had been published. And we were getting to the point where we're having discussions with a licensee. And I thought look, the best thing we can we can wrap this up, because still get the design registered design on the designs of the tillage device itself. So we applied for that and got them granted and license that particular product. Yeah, so though, that ended up being a good story for us.

Speaker 2  42:16  
Buying Can you talk a little bit about the litigation and design patterns? And then with respect to something like Ford, where they have multiple different components of the car? What kind of thing? Have they done? And has it been successful?

Unknown Speaker  42:36  
So there was a recent case, it was Ford, that was being sued by the automotive body parts Association, that went up to the Supreme Court last year, it was denied cert, but what Ford has is they've have design patents on a lot of their products, whether it's, you know, the side sideview mirror, the headlight the hood. And so most of us, God forbid, none of us want to be in an accident, but most of us will, you know, if we have an accident, you know, you take it to an auto body shop. And you know, you'd be just as happy with a third with a non OEM product as you probably would be as you wouldn't be with a, you know, off the shelf product. And so that in particular, Ford sued for design patent infringement, the automotive body part association was saying, hey, no, you know, you've sold, you sold the product, when you sold the car, and therefore somebody gets in an accident when they want to get something replaced. We don't have to go back to Ford to go buy the particular product. Unfortunately, the automotive body part. Body Parts Association did not win that one, Ford won that one. So if you get in an accident, you're still going to have to buy products from OEM products at this point, and because of the design patents that potentially would be there. That's kind of that and Randy bath. I think I'll let you talk about kind of the the, the tests that use nowadays when when looking and then as well as kind of the Samsung Apple case.

Unknown Speaker  44:35  
Thank you. So the test for infringement for design patterns is the ordinary observer test. This stems from a court case in addition goddess versus siswa, which was towards a now file, a nail buffer. Before that, it was a cumbersome test called the point of novelty. The ordinary observer test kind of changed the game and made people more aware of design patterns. That's as it's a simpler test to implement. The ordinary test is when you're used when comparing a patented and accused design. And basically, the test is infringement can be found if in the eye of an ordinary observer, given its such attention as a purchaser usually gifts. So you're the standard is an ordinary purchaser. If two designs are substantially same, it The resemblance is such as to see such an observer and using him to purchase one opposing supposing it to be the other. So generally, what they'll do in implementing this test on the courts will look, we'll look at the overall appearance, they look at the drawing itself, on and in the design patents, they won't look at it by element, looking at like certain aspects that's been claimed in the design, they'll look at the overall design shown in the drawing, and then compare it against the accused product, and the appearance and the look and see what the similarities and differences as well as they can compare with prior the prior art designs as well. So they'll just, it can be implemented by looking at the drawings side by side. And so and for that case, that by looking at the appearance, they're not necessarily isolating or mental appearance from necessarily the functional item. Another case that was a game changer was Samsung versus Apple case. This really put out design patents in the light, and really showed the value of what a design patent can do. Samsung versus Apple, it's been going it was resolved in 2018. But it's been going on since 2000, basically 12 In this case, Apple has several design patents directed towards the the curvature of their phone to display. And also as we saw in the earlier slide, the icon, graphical grading, interface to design. And it's been litigated over the years. And in this case, Samsung was found to be infringing those, those designs and got awarded $539 million from the total profits. So it really showed how design design patents can bring a lot of value. In especially in consumer products, or a product that can is sold frequently in this in total profit damages. And this because of this case, design patents are very popular. And a lot of law firms have joined the game because of it as just a side note. So when you are looking considering filing design patents, you should really see confirm that that law firm has filed many designs as it's a very unique practice.

Unknown Speaker  48:02  
I think we're gonna go on to the next slide. And I think Vanguard is gonna Yes,

Unknown Speaker  48:06  
thank you, Randy Beth. Yes. So I mentioned earlier about, you know, the unique situation Australia is in or currently unique situation where Australia is in and the UK was part of that before. So up until 2016, the UK also made this demarcation between the copyrights and designs so that there was no overlap. But the UK in trying to harmonize its laws with the European Union also ditched that and, you know, now allows people to have to still have copyright protection in something that they into copyright work that apply to a design. Now, the interesting thing with that was that prior to that they had the limited that overlap for the copyright protection to be limited to 25 years. But Australia seems as far back as about the 70s and has maintained its stance. Now, as I said earlier, it's a really contentious issue. Two different parties agree again, for its abolition parties, again for its top audits. So yeah, I think it's a case of watch this space. We don't know what will happen in the next couple of years. Next year Brown.

Unknown Speaker  49:35  
Yep. And so the the, there's there's some legislation that's going through, and that that's trying to give the authority of the Customs and Border Patrol. So the people that you normally interact with when you enter the country have a very important responsibility and unfortunately, they're understaffed, but they're tasked with I'm looking at goods that are coming into the US and distinguishing between what's real and what's fake. And so they're allowed to confiscate sees articles that have copyright protection, trademark protection, even utility patent protection, but design patents are not on their authority. Currently, there's a legislation going through, called the counterfeit goods seizure act that was introduced last year. It's got a lot of support from companies, you name it from Fortune 500 companies, because they don't want their products being knocked off, or knockoff products coming into the country and being sold with their names. So right now, the only way to enforce the design patents is to take it to federal court. However, right now, the jurisdiction for the Customs and Border Patrol for copyrights, trademarks, and the utility patents, you can actually take things to a case in front of the International Trade Commission. There's pluses and minuses for doing that on what you can collect and what you can't collect in the total amount. But in general, it's it's a really good venue. Like Randy Beth was even mentioning a lot of law firms starting to plan to design spaces, a lot of law firms playing in the space for International Trade Commission, because it's an easy place to an easier place to litigate and get decisions out of an administrative agency, get what you need from at least things being important in you may be able to get a little bit of damages, but at least stop the imports coming in the administrative judges there are really, really good at comparing, comparing differences. Here's one on the screen right now, between you know, what's a real product and what's a fake product. And so you can look at that from a trade dress perspective. But the rear the the ITC judges are really good at looking at that. And a lot of their opinions. And a lot of their proceedings are upheld at the Federal Circuit on appeal, probably more so than what you'd see district courts, in their claim interpretations coming out of the District Court. So the it's another pathway for litigation, that's a cheaper pathway for litigation, if you want to go down that particular route, to at least keep products off. Again, the with everything going on in Congress right now and the presidential elections. We may not see that that act, going through Congress, but I think it's got enough overwhelming support that bipartisan support that it's I think it has a good chance of finally actually making it through and giving customs and border patrol the ability to to have design patterns in their tool toolkit to be able to stop fake imports from coming in.

Unknown Speaker  53:20  
Yes, ma'am, we're back to you.

Speaker 2  53:29  
Next slide. So a few other things I just wanted to talk about briefly on this webinar. Before we get to the questions is, in case those of you who aren't aware, I'm the chair of the Equity Diversity and Inclusion committee for Artem and we have released our first ever diversity survey. We are hoping that the RM membership engages with this because we're very excited to see where we can help you on. Please consider doing this. If you have not yet it closes October, October 31 2020. Also, the Board of Directors elections have opened up and they're active to October 15. Please consider running for that the board is very excited to increase the diversity of their candidate pool. And I'm really looking forward to have a new membership in new blood go through. Next slide. So this time, I'd like to thank our panelist and open up the floor to any questions. So if anybody has a question, you can put it in a q&a or you can raise your hand and I have a quote on that. And while we're waiting for the questions to come in, I'm going to ask a little bit more from the panelist if you can tell us about with academics, when we are trying to work with our inventors and talking to them about a potential design. At what point do Do we want to actually start working out the drawings? Do we want to have a law firm work with them early? Or do we want to wait until they have something that is in a final place? And how does that align with working with a company who expresses interest? Do we want to have some sort of a design patent filed? Before we go into a conversation with a company? Or would you feel comfortable with an NDA?

Unknown Speaker  55:30  
Okay, I guess I'll take that. So I think I'll be loath to rush to file a registered design. Because as we mentioned earlier, it's very good for market ready products. And if you're not because of the speed of examination, if you're not careful, if you rushed out failed. And then you eventually find out that your design is different, what you previously filed may turn out to be prior ads against you. So with regard to that, I'll be careful to ensure that so like, in particular, the recent experience that I shared earlier, were sort of fairly certain that you know, this way, the final designs that we had, there was no chance that things were going to change, you know, like utility utility buttons, where you have, you know, you can file your provisional and then 12 months down the track, you can file a full application that, you know, may have a few changes here and there. But still, essentially, we, you know, more or less same thing, you don't have that sort of thing with with design patterns. Thank you.

Unknown Speaker  56:46  
I can add on to that, you know, for most of what I see at the university, most of the time, when I'm licensing something, it's very early stage, and I'm looking for a company to put further development into a particular product. The ones where I'm having the conversations with the faculty members about designs, is really at the end of the day where I'm looking for a manufacturer, because the university is never going to be the manufacturer, you know, large scale manufacturer, and ultimate, you know, distributor of a particular product. Those are really when I'm looking at having those conversations. Otherwise, I'm looking more towards the company to come up with a final design, or they may work with our faculty members in conjunction to come up with what a design would look like for a final product. But normally, it's not very early stage when I'm having those conversations. As I said, right now I'm having conversations with people, we're five years plus in the running, that that I've been having these some of the conversations with people. And right now we're looking at just manufacturers of particular products, and some manufacturers as well as distributors of the product. And so that's why I've been having those conversations. But most of the time, it's it's probably going to be like Bailey said, it's probably going to come back and bite you because it'll end up being priority against yourself.

Speaker 2  58:23  
By God, one of the things that we've seen, and only I want you to address this as well, is one of the things that we've seen is that the United States, we tend to fail in our country, because we have the largest market. But when we're looking internationally, do you all in Australia, consider filing in the United States with design patents in addition to doing a registration in your own country? And when they can you look at that from the other perspective is when you're working with an individual client, back in your boutique days before you in academia? What do you recommend for inventors who are not been bankrolled by academics? But they're looking at an international market?

Unknown Speaker  59:09  
Randy, do you want to go first or?

Unknown Speaker  59:12  
Sure. I could go first on the considerations if you're if you're not in back in the boutique days, if you're thinking about going international. The Hague agreement came into place maybe just five years ago. And it's a really it's a math, it's a financial question. If you think you're gonna file only in one country, other than the US like Europe has an registration system called the O hem. If you're going to go ahead and do that it's not valuable to go to the go through the Hague. I think the threshold is usually if you're going in more than five countries and you have more than 15 designs, a KiCad. That's where the threshold is. So the Hake is really only valuable if you plan on going pretty broad The foreign generally, if you are an individual event, individual event or not being bankrolled by yourself or smaller company, it really only makes sense to file in maybe handful of countries, where if you think where you're going to make where you're basically where your bigger market share is, and so the value is probably usually to go through the Paris Convention, where you file initially in the US, and then maybe six months later, go ahead and file internationally. Through that versus doing the Hague agreement.

Unknown Speaker  1:00:37  
So with regard to, you know, this was in Australia, or you know, some other country, I think I'll say it typically, most most IP rights applicants would look to file internationally. Well, if I speak from a purely Australian perspective, we would typically look to file in the US because as you rightly mentioned, Megan, pay it's quite a large market that we'd like to get access to, and protected within that market. So that's yeah, for us a key consideration. And as Randy Beth touched on, we would consider whether it's the egg or the Paris Convention, that we would use, well as Australians, we can't use the system anyway, because we're not signatories to it. But, yeah, I think one thing that I'd like to run off on, is to talk about the existence that we exist, then you do not need, you know, to file a local application, you can file directly, as long as you in contracting party states, you can file directly with international guru and direct application to all those international countries. So it's, that's where, again, it's sort of different. It's different to the PCT system where you have to have something in your own local country before you can make the international application. Just something's not

Unknown Speaker  1:01:58  
in Mega connect, can I add on to this real quick? So I think I agree with, you know, what, what with Randy batha would be able to see, both both said, so it's looking at kind of the places where you're going to manufacture you're gonna use but as I said earlier, with being able to prevent products from coming into particular market, so that may be a strategy to depending upon the where you look at going, as you know, obviously, the places that you intended to be used where you intended to be manufactured, but also consider the places that you don't want it to go to.

Speaker 2  1:02:36  
Definitely, there's a strategy of blocking people as well as getting your own access. All right, well, thank you, everyone, for your time today. So again, this panel is happy to chat with you further about design time, we have all of our contact information on the page if anybody wants to reach out, and we appreciate you taking the time to listen to this. At some point in the future to interested in learning more about design patent, please reach out and we can consider putting this on either an annual meeting or a regional meeting. Hey, would you like to close yourself?

Speaker 1  1:03:08  
Alright, thank you. On behalf of autumn I want to thank this panel for this really great discussion. And I also want to thank all of you who attended today, we hope you found some really great information. Just a reminder, a recording of this webinar will be available for viewing within the next few days. Access to that recording is included in your registration. Visit the autumn website to view it or to check out a past webinar you might have missed. The evaluation will pop up when you close out of this window. Please fill that out for us. It really helps us know how to plan for the future. And that will conclude our program for today. Thanks for joining us and enjoy the rest of your day.

Transcribed by https://otter.ai