Speaker 1  0:30  
Am okay. Hello and welcome to today's autumn webinar primer on design patents for TTOs. In view of recent case development to patents for TTOs. My name is Anne McCollum. I'm a member of autumn such educate team and today's staff host. All lines have been muted to ensure high quality audio, and today's session is being recorded. If you have a question for the presenters, we encourage you to use the Q and A feature on your zoom toolbar. Should you need closed captioning during today's session, the Zoom live transcript feature is turned on and available on your toolbar. I would like to acknowledge and thank Autumn's online professional development sponsor, Marshall Gerstein, we appreciate your ongoing support. Now I would like to welcome today's session moderator, a long time. Autumn stakeholder, Charlie Macedo, partner at Amster, Rothstein and everstein, Charlie, are you with us? Yes,

Speaker 2  1:30  
and thank you for having us. It's a real pleasure. Recently, the Federal Circuit had issued a very interesting decision on design patent law, and so in talking it over with Ann and others at autumn, we thought it would be nice to give a little primer on design patents for tto is in view of recent case developments as well as the historical law. And I'm very honored today to have joining me our senior counsel, David Goldberg, David, please wave hi and say hello, hello, hello. And Thomas Hart, who you all have seen many times in many ways, who is becoming one of our AI experts. But now gets to talk to you a little bit about design patent. Thomas, please say hello, hello. Thank you. And so today, I'm going to begin by letting Thomas share our famous disclaimer. Thomas, please,

Speaker 3  2:26  
yeah, sure. The following presentation reflects the opinion of its authors and does not necessarily represent the views of their respective clients, partners, employers, or of AMSA Rothstein and evanstein. LLP, nor autumn. Additionally, the following content is prepared solely for the purposes of discussion and illustration and does not comprise nor is to be considered as legal advice.

Speaker 2  2:49  
Thank you, Thomas, so today we've set forth as an agenda where we're going to start off by just talking about examples of types of things which you can get a design patent for that may be of interest to tto. We're going to walk through how to read a design patent, which is seemingly simple but has some intricacies that may be a little complex. We're also going to talk about where and how to get a design patent in terms of what countries you can look for and procedures that are available. We're going to talk about the new law and obviousness for design patents that was a result of the recent decision. I was referring to LK Q versus General Motors. Well, then we'll talk about the what has been the law for a little while on infringement is judged by an ordinary observer as to whether or not a design patent is infringed. And then we'll walk through some examples of some strategies that you can contemplate using design patents, either by themselves or with other tools, to see whether that makes sense for you and your project. So we're going to begin by talking about examples of patentable designs, and as you can see on the slide, we'll walk through them, but each of these are actual design patents which issue, and the ones that you see here ones that our firm obtained for various clients over the years. So we begin with the statute. And the statute says whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent, therefore, subject to the conditions and requirements of this title, the section 171 A of the Patent Act. What's critical here is you have to be new when you're talking about design patents, like utility patents, we talked about novelty, and that's what the new means. Original means that, like in the utility patents, you have to be the inventor. You have to be the inventor in the design patent and ornamental is a fundamental distinction between design patents and utility patents, because it's going after an ornament. Mental aspect in contrast to a functional or utility aspect, but it still has to be for an article of manufacture. So that means that that's how you get the concrete aspect of it, and we'll be discussing in the claims of how that comes into play on what you're doing. So here we see some examples of typical consumer items that you could get a design patent for. On the left you see a cosmetic brush that we got a design patent for, elf in particular. One of the salient features of this brush was that the handle was a triangular shape, and you can see how that was drawn and brought out. On the right, we have specifically a earbud that we also got for another one of our clients, called a wireless earphone. And in there you can see that there's a lot of unique texture and shape to the ear bud that we sought to protect. This is very common on how design patents are intended to be used and are used in the marketplace. This is another interesting example where there was a very unique and ornamental design for whiskey bottle that one of our clients had, and we got them a design patent for this. And we'll come back and talk about this whiskey bottle later too, but where you can see that we're showing texture and where labels go without putting what the labels are, because you want to make sure the design covers any one using the same design and not necessarily the particular marks. Design patents also can be used for more industrial objects. Here we see a design patent we got for Hoyt Van houtemach, who is a Emmy award winning director of filmmatography on many famous movies, which, if we listen to them, you'll say, oh, yeah, I remember that. And one of the things that he had is he had developed a new rigging block that was both functionally unique as well as ornamentally unique. And you can see the ornamental features here. And we got him a nice little portfolio that covered that rigging block, including the design patent you see here for the for an example rigging block, showing in dash lines items that could be found with that block. Something which is more common among the universities that have a hospital system, like the Board of Regents of the University of Texas System, is you can cover things like medical devices or medical equipment in terms of the ornamentality. These are not patents that our systems that we got, but we put it up there to show you how universities with hospital systems have used design patents to protect new products and and how to get them. One thing that people forget about is that you can also get, or were known as GUI design patents, or graphical user interface design patents. Here are two that we obtain for clients over the years. The first one on the left was directed was for the Winkle bosses, for their wink decks screen where they had a very unique and ornamental design of how to share the pricing information for different indexes. I'm sorry for different exchanges that made up their wing ink deck, that made up their their wink decks for measuring what the spot price for Bitcoin would be. And on the right, we see another ornamental design that we did for another client of ours magnify, which showed how they display data that was being used for their system to talk about different stocks and other related items. What you can see is that you can protect the presentation of your guise or your portion of the screen, and you can dash the data so that way it's not limited to the specific data that's being shown. Now we're going to turn to how to read a design patent. And here we're going to walk through an example of a design patent we got for Stuart Weissman years ago, dealing with a woman's shoe one. Of the things that's interesting that you can see is back at the time we filed for it on July 13, we used an accelerated process, and that patent issued in November, very quick to be able to be used to be enforced in the same season, very quickly. So we start by understanding that there's people with graphical details like you are used to in utility patents. At the top, it tells you it's a US design patent. It gives you the first name inventor, it gives you the patent number, and it gives you the date of patent, which we think of as the issue date. You see the double asterisks on it that tells you the term in this context, this was before the design patent law patent term changed. So at that time, it was 14 years today, if you had a brand new design patent, it would be 15 years. On the left you see the title where it says 54 you see the inventor, or inventors, where you see 76 the double asterisks, again, is referring to the term I just told you, 22 return refers to the filing date, which, if it doesn't claim priority to something earlier, would be used for prior art. You have the typical classification information that you would use, as well as the references cited that you're used to from utility patents, and of course, when you have an asterisk next to a reference, like you see in the first three references listed on the screen, that means it was cited by the examiner in an office action and arguably discussed, every patent turns on What is claimed. The claim in the design patent is always a single claim. It comes in the form of the ornamental design for fill in the blank as shown and described. In this case, it's for the woman shoe, as the statute says, You only can get an ornamental design for an article of manufacture, so that blank better be an article of manufacture, otherwise you're not going to have a claim that meets 112 requirements. So when you're drafting the claims, it's pretty straightforward.

Speaker 2  12:13  
In the typical object, you need to show a variety of views. This is typically the order that we use, although the order is not required, it is a nice way of keeping in mind, and it can change depending upon what the object is. It can be. We typically have figure one be a perspective view of the article of manufacture, showing the new design. And then figure two would be a front view of whatever it is that you showed in figure one. Figure three could be a rear view. Then you might have a right side, a left side, a top plan view, in other words, looking straight down or and a bottom plan view looking straight up. Basically, you need to show all the different angles, ideally in best practices for doing a design path. Here is the example of the different figures where you can see the Perspective view in figure one, followed by the front, back, left, right, top and bottom views. You can also use disclaimers, and we'll talk about that more, where you use broken lines, or dashed lines, showing non claimed elements, and therefore the purpose of illustrating the environmental structure and form, no part of the claim design. So like, for example, when I was talking about the GUI design patents earlier, we would dash the data, because we're not claiming the data, but we're showing how data could be presented in the context of the design. You also can have moving parts. So in this context, we see a design patent presented not by us, but by another firm where they have a lot more figures than I showed you, but they have, as you can see in figure one, the view in a closed configuration. Well, figure two is the view in open configuration. To illustrate that the box was capable of being either open or closed, you can also see that for both the top and the bottom, they have some broken squiggly lines, which show you that the box could be deeper than shown, so you could have a lot more space in between there

Speaker 2  14:38  
gooey design patents like the wink decks, one we showed you typically only have one figure in there, because it's the specific graphical user interface you have. But there are times where you could have more than one figure. And you can see here a design patent that was presented by a different firm, where they're showing a. Different examples of legally in different embodiments. Now, typically, when you present more than one embodiment of an invention, in contrast to showing action, you can result in a restriction requirement, which would make you then have two separate patents, or a separate patent for each embodiment. So now we're going to talk about where and how to get it. And in this one, we're going to turn to Thomas Hart. Thomas, thanks, and Thomas, if you tell me next slide, when you want next slide? Yeah, we

Speaker 3  15:34  
can go to the next slide. So as Charlie has, I think, made very clear, the US provides for design patent protection. Typically, what it is is, unlike, you get 15 years from the point of issuance for protection, which is interesting, it's not from the data filing some some cases, you can have continuations on design patents and allow for perhaps extended protections. You have one claim, which is, as we talked about earlier, the figure is described and shown, or the the ornamental design is described and shown, the secrecy is maintained during prosecution, continuations are allowed. So you can even have a continuation off of, for example, a utility patent, so long as there's adequate support in that utility patent, but you can't claim priority to provisional patents patent applications, unlike utility patent applications. So that's something to bear in mind,

Speaker 2  16:34  
and that's a very important point for our tto is to keep in mind the common practice in the tto is to file a provisional, wait a year, then file a PCT or a or convert to a US, if you're not seeking international protection, that provisional will not provide you support for design patent and any publication that occurs more than a year before the US non provisional will bar us filings, and can also bar you with respect to others, correct and but one of the strategies that we have used is to include the the GUI designs that could be the basis of a GUI patent, or other types of design path fit patents for other types of inventions in the in the disclosure of the non provisional, which can, as Thomas said, provide a basis for you To file continuation, in part, coming back at a later time when you decide there's more money and value to protecting it. Okay,

Speaker 3  17:52  
so internationally, a lot of countries offer their own design patents and design protection systems. There's also the Hague system and The Hague agreement. And what that does, it allows you to file one application to essentially seek protection in multiple countries, instead of having to seek protections individually and engage local, local council, individuals, individually in each of those countries. Not every country subscribes to this, even if they do have design patent protection or something similar, similar to that. For example, Australia here doesn't provide, is not a member of The Hague agreement, but does provide design patent protection, although it's a little bit different than the United States, but key countries are included, including China, the EU general is a part of that as well, Brazil, Canada, Mexico. So a lot of economic players are part of the Hague agreement. And we can see a full list of those on the next slide. We Yeah. So I think we can go to the next slide. Charlie, yeah.

Speaker 2  18:58  
The only thing I want to mention is we do give you the URLs of where we pull this information from. So if it changes over time, please make sure you check to see what the current list is and who's participating,

Speaker 3  19:09  
right? There was some the UK, for example, is briefly not in a member of The Hague agreement after it left the EU, but before it rejoined. So the list does change over time. I think we go, can go to the next slide. Charlie, I did pros and cons. Okay, sorry, so there's, there's different pros and cons of this system. One is that, obviously you get one, one international application. The issue with that is occasionally, you'll find that there's different Drawing Standards. So your one application may not actually work for each country that you're filing. Additionally, you need to you can file for a multitude of countries in one application. We just discussed that in most cases it's more cost effective. However. Or if your application is more complicated, or if you have fewer countries that you're filing in, you may find that the cost benefits are Don't, don't weigh in that favor. So for example, if it ends up being that you need to have correspondence with local offices and engage local council, then the cost benefit of, Oh, don't have to engage local council. I could just file one application begins to around same similarly, you can just file in one language. You don't need to have a translator. But down the road, if you end up going to litigation, you may need to engage translation services anyway, and then at that point, you're dealing with the fact that it may have, may have been nicer to have your translation be the official record, rather than a translation generated after the fact, after the application was filed.

Speaker 2  20:50  
And one of the things to keep in mind is just drawing analogies to what the tto are used to utility practice. The Hague is like a PCT, but in contrast to a PCT, where you still have to do national phase filings to perfect it, you don't necessarily have to do national phase filings to perfect an international design application, unless there's an objection race. And so that's that's something to keep in mind. The other thing is typically like right now, if you went for all the countries, I think it's around 10k for the filing fees to do that. So it's a relatively modest budget for a mostly worldwide protection, and that that's something that can be useful to tto is depending upon what you're trying to protect and where you need to have such protection. If you elect less than all the countries, then you can save on the government fees. The other thing to keep in mind is, because you can file for, I think, up to 100 figures, it does let you put many applications into one, even though you will have to potentially pay for whatever ones you want, pursuing the different national regions later on, Thomas, I'll let you continue, please.

Speaker 3  22:15  
So yeah, just to give an example of how requirements may vary, even though you have this hay agreement in place, this is just something to keep in mind when you're pursuing protection and in considering protective strategies, is that it may depend a little bit on the exact requisites that the places and what protection you're seeking. So for example, the United States has a maximum term protection, 15 years from the issuance date. The EU has 25 years. But you have to keep in mind that you need to renew every five years. In China, you have 10 years from the filing date, not from the issuance date. And Canada, and Canada, you kind of have an interesting mix of letter of 10 years after the issuance or 15 years after the filing date. And in India, you have 15 years, and that's 10 years from the date of registration. With again, you can have an extension for an additional five years. So that's just something to keep in mind, is even with this one application, you still have a lot of different variables to manage. So then for unregistered designs, interestingly, the EU provides some partition filing, but most other countries do not, in terms of the number of designs that can be in one application. The US has a has one claim only go ahead Charlie, just

Speaker 2  23:35  
one comment for design patent law, they don't protect it. There can be trade dress rights that are protected by design patent that may overlap that could protect it without a registration, but the design patent itself is not protected generally, except when you get a design patent right. Okay, David will talk a little bit more about

Speaker 3  23:58  
that later. So then for the EU, has no limit to the number of designs in one application. But other countries do have limits in terms of novelty. Charlie discussed it a little bit earlier with the United States. In the EU, you have 12 months to apply for the registered community design in the EU in China, any worldwide disclosure will bar your application be if it's before the design patent is filed. Canada provides a one year grace Oh, one year grace period. And India provides a six month grace period. And then, in terms of a brief description of the design, the technically in the US and the EU, it's optional, whereas China, Canada and India are mandatory. And the brief description, yes, it's very, as we discussed, very bare typically.

Speaker 2  24:53  
And when we say optional, that's beyond the figures, right? If you're going to have fake. Obviously you have to do figures. Could figures is how you describe the design in the US. And if you're going to have a disclaimer because of dash lines, you will have to include language about that, any description beyond that. It's not the normal practice in the US to include it. But as Thomas indicated, there is an optionality that could be patron Julian vote. Go ahead. Thomas,

Speaker 3  25:28  
so yeah, according to 35 USC 172 you this is kind of a trap for the unwary. You must make your priority within six months and not 12 months.

Speaker 2  25:38  
This could often be confusing for people used to utility patents, where you have a one year period to do your international filings off of your provisional or non provisional for design patents, it is six months. It's more like trademarks than patents in that sense, in terms of timing. So make sure that if you want to do a design patent foreign filings, that you keep that in mind. So now we're going to turn to the new law on obviousness for design patents, and we refer to a dosa in contrast to opposer or posita, because it's a designer of ordinary skill in the art that we judge obviousness by and David is going to lead this discussion.

Speaker 4  26:30  
Thank you, Charlie. So for 40 years, from the 1980s until May 21 the test for the obviousness of design patents was relatively rigid. It was called the Rosen Durling test, and there were two prongs. The first prong required a primary prior art reference that must be basically the same as the claim design. And the second prong required that secondary references must be so related to the primary references that the use of one would suggest the other. So in 2000 this was somewhat analogous to the old TSM test in the context of utility patents. And as you may know, in 2007 the US Supreme Court rejected the rigid approach of that test for utility patents in the KSR cases, KSR versus Teleflex, and in particular, KSR determined that the TSM test was too narrow and inconsistent with prior Supreme Court jurisprudence on obviousness. So although it was established to prevent a hindsight bias, which is what they called it, the Supreme Court rejected the rigid application of the TSM test by pointing to another Supreme Court case, Graham versus John Deere, and adopting more flexible approach. So after the KSR decision came down, the question was, how long would it be before the other shoe would drop and we'd get a similar ruling in for design patents? And the answer is, it came earlier this year, in a case lkq versus GM, global technology, which regarded the design of the Chevy Equinox vendor, and there this the US Court of Appeals for the Federal Circuit sitting in en banc, replaced The old rigid Rosen Durling test with a more flexible test that's analogous to the RAM test that was put in place in KSR for utility patents and this for practitioners. This was seen as a happy result, and Charlie and I actually participated in an amicus brief before the court advocating this particular outcome in a brief for the New York Intellectual Property Law Association. I think we can go to the next slide. Yeah. So the Graham test has four prongs. The first prong is to consider the scope and content of the prior art with the knowledge of an ordinary designer in the field of design. The second prong is to determine the differences between the prior art designs and the design claim at issue. The third prong is to consider the level of ordinary skill in the pertinent art. And the fourth is to assess secondary considerations of non obviousness. Just

Speaker 2  29:45  
to be clear, we have modified the gram test from being a utility test to how it's being presented after ok Q for design patents, right?

Speaker 4  29:58  
So this is the. Kind of analogous rationale, you know, the analogous prongs that the court came up with in LK, Q, and they did, for each of these prongs, they provided us with some guidance, but there's also some questions that were left open, and they did adopt, you know, so far as possible, try and adopt the flexibility of KSR, but there are questions because of the differences between utility patents that protect functionality versus design patents that Protect ornamental designs, just the nature of what's being protected is different, and that raises some issues, as we'll see. So for instance, here, for the first prong, consider the scope and content of the prior art with the knowledge of an ordinary designer in the field of design. So the court here clarified that the primary reference must be identified, but it need not be basically the same as the claim design. Now basically the same was the old Rosen Durling test. And again, they they're trying to be more flexible here. Open it up to greater flexibility, and that's why they did that, but the question now is, what is analogous art? And the they they looked at this by looking at what was used for utility patents, and there art from the same field of endeavor as an article of manufacture of the claim design will will be, can be considered analogous art. And the court in LK Q said that this was probably something that would also apply in the design patent context. On the other hand, in utility patents, you can also use art that addresses the particular problem with which the inventor is involved. Now the court in LK Q wasn't sure what to do with this. They said, Maybe yes, maybe no. It may be applicable, but maybe not, and to some extent, that may depend upon the design that you're looking at, for example, before one of the designs that we showed was for a mechanical structure, for rigging cameras or lights in in for filmmaking and for there. Maybe this is something that's more relevant than the design, the ornamental design of an automobile offender. So this is a question that's left open. We're fairly sure this will come up in litigation at some point in the future, and the court will able, perhaps be able to provide us with more guidance going forward at that point in time.

Speaker 2  32:57  
Yeah, I think in the fender field, you could think of a problem like, where do I put the GM logo on a fender? And that may be a problem which leads to some ornamental choices on what you are doing that aren't functional, but are ornamental. And that may be something that is a particular problem, that could lead to a discussion of what is or isn't appropriate for ornamental design, but it may not, and this is something which you know shows what happens when you try to apply a test from the utility field in the in design patents and vice versa. Is it addressing a utility function versus an ornamental function?

Speaker 3  33:48  
And I guess I have a question for you, Charlie, do you think, yeah. Do you think that there's esthetic problems or like is if a designer says, I'm trying to make a Fender that has this, this appeal or this appearance. Do you think that is, um, that would fall within this test, or is that just not, uh,

Speaker 2  34:14  
not relevant? No, I think ultimately, I mean, look, we don't know from the courts what the test will be, but my gut is that you have to look at the esthetic qualities, as you said it, and you have to look at what's the inquiry that would impact whether or not someone would adopt the esthetic quality of the design patent. So, for example, if you were trying to make we had a client that made backpacks that look like animals. How you address the problem of how do I make a backpack look like a panda versus a a rhinoceros? Can lead to. Both functional things as well as esthetic I think that to the extent that you're looking at the functional design, patent law doesn't cover that, and that probably would not be the right inquiry. To the extent you start looking at how you make those esthetic choices, that may be an appropriate inquiry. It is certainly something that you're going to do along the lines of somewhere within these four steps and how it rolls in, is something which we really need to let the cases develop to figure out where they were, and that's why, in the amicus brief that David and I participate in, we encourage the court to adopt the framework from Graham versus John Deere, but not to make too many decisions, because it need to leave open the ability to have the appropriate test case of where the functional requirements are different than the ornamental requirements,

Speaker 4  35:56  
right? And I think the fact, Thomas, that you raised the question, which seems to be a natural question, suggests exactly the reason why we're going to need further guidance from the courts on this going forward,

Speaker 2  36:08  
and we need better cases to do it in I mean, the worst thing the world is for a court to adopt a specific rule without understanding the implications of how it comes and, you know, it took 50 cases at the Federal Circuit before the rosenduran case was reconsidered in view of KSR. So it may take time for this to develop and figure out the right fact patterns. David, do you want to go on to the next factor?

Speaker 4  36:36  
Yes. So the second factor determine the differences between the prior art designs and the design claim at issue. So here, the LK Q core clarified that prior design should be compared to the claim designs from the perspective of an ordinary designer in the field of the article of manufacture. So that gives us a little guidance, and it made it clear that they're removing the old kind of more rigid similarity thresholds that we had from the Rosen Durling test, but they're not providing us with very much guidance. On from the one hand, what an ordinary designer might be, and on the other hand, what may be appropriate art and the motivation to combine these were things that were tackled in KSR in the utility patent area more thoroughly. But again, there are there issues about how we're going to apply this in the design patent area, given that it covers ornamental designs and not functional designs. So there's some questions here going forward, and obviously something that's again, going back to a design for an animal backpack, for instance, is going to be different than when you're evaluating the mechanical rigging structure again, that we showed earlier in the presentation. So I think this is again, another area where the court left it purposefully open because we're going to need further, further litigation to kind of learn what the appropriate test may be, and to what extent that will is dependent upon the kind of designs that we're seeing come through the court system.

Speaker 2  38:33  
When we talk about infringement later, we'll talk about the rejection of the point of novelty test on the infringement side. It's going to be interesting how this factor will get weighed in with the infringement analysis, and how we how that comes into play. Because, as we all know, that which infringes later should anticipate earlier, and we want to make sure we are applying the same test to determine whether you get a patent, as to whether you infringe a patent. David, why don't you move on to factor three? Sure

Speaker 4  39:13  
three consider the level of ordinary skill in the pertin art again, here, the court clarified that this level is held by a designer of ordinary skill who designs articles of the type involved. So it's a dosa, not a posa. But again, you know this. This makes it clear that you're looking for somebody who has some kind of experience with the articles. But it doesn't really set forth any particular specifications as to the level of qualification in that design. We've already seen a little bit of people who are interested in learning what the answer to this is going to be. And I think again, this. Something that, again, it's going to depend to some extent upon the kind of design patent that is at issue. You know, again, is it something that's more similar to that rigging structure, or is it something that's more similar to an animal backpack? And again, we're just going to have to see going forward. What happens here. I think what

Speaker 2  40:24  
you have to think about is, was the level of skill of someone who designs a makeup holder versus the level of skill someone who designs a Fender versus the level of skill someone who is a glass blower to that maybe makes makes whiskey bottles or vases and so just like in the utility patents, the positive will depend upon the art that you're considering. The article of manufacture involved will will impact how you determine what the level of ordinary skill is of the designer that's involved. And there are some places where the designers may be very sophisticated, and others where the designers may not a GUI design maybe, maybe done by anyone at some points, but a GUI design for an exchange may be done by someone of a higher skill set, and, and, and that's that's why you always have to keep in mind that the subject matter of a design patent is an article of manufacture, and it's which article of manufacture will impact how these tests are being applied More so than maybe what the design itself is,

Speaker 4  41:42  
right? But you could easily see people arguing, even in the case of a backpack, for instance, is, is the appropriate level somebody who has some kind of training with ergonomic design versus somebody who has a more esthetic background as a an art director, something like that,

Unknown Speaker  42:04  
zoologist, in our example, because the parts of the different animals, right?

Unknown Speaker  42:10  
There you go. Yeah,

Speaker 2  42:13  
that's why lawyers get paid too much money. Some people would say. So let's go on to sure

Speaker 4  42:21  
the last prong of the test is to assess secondary considerations of non obviousness. And the court clarified here that it wasn't going to disturb its existing precedent regarding the application of secondary considerations, and there already is some. Even under the Rosen Durling test, there's already some law on this. And under this prong of the test, the court clarified that secondary considerations that probably would be relevant include commercial success, industry praise and copying these role things where there's more or less existing law, and it's relatively easy for people to understand how this can be applied, even in a design patent realm, but the court left open whether some of The other secondary considerations that apply in a utility patent context would also apply in a design patent context, and these included long felt but unresolved needs and the failures of others. And the court here said these may or may not be applicable in a design patent context. And again, not to keep harping on this point, but I think again, to some extent, this is going to be dependent upon the type of design at issue, the specifics of the design at issue, and what may be involved in in the design that's claimed. So again, this is something where we're going to need future guidance from the court. We're sure these questions are going to come up at some point. And this is something obviously where you can make a depending upon which side of a litigation you on what your design is, but it's also things you need to consider as a designer when you're coming up with these things. Yeah, I

Speaker 2  44:28  
think one of the things you have to consider is these, the these secondary considerations were created in the context of a utility type issue, and again, the reason why. And in fact, I think in our brief David, if I recall properly, we actually use some of the examples to say they may or may not apply. Because even if there are circumstances where long felt and unresolved need for some specific type of ornament. Design existed. It doesn't mean it would always be an applicable factor, because you have to be careful to distinguish between the long felt need for a utility item versus an ornamental item. And that that can be really, that, that that, that's why there was. Skepticism in the court on these issues and why we we actually encourage such skepticism in our briefing. David, you want to go into motivation?

Speaker 4  45:35  
Sure. So thinking, you know, stepping back generally and thinking about the lessons of the LK Q decision here, the two things that you want to keep in mind really are, first of all that a rigid test is being replaced with a flexible test. And we just went through the gram factors, and we saw how the court gave guidance on a lot of the factors, but they also left some open questions. One of the things that the KSR Court addressed that the lkq court did not really address so much were examples on the motivation to combine, and that's something that we think is going to be addressed again in in these cases going forward. Examples from the utility patent area include combining prior art elements according to known methods to yield predictable results. Simple substitution of one known element for another to obtain predictable results. Again, all these are results oriented. So the question is, when you're when you're thinking of something that's ornamental and not functional, is this something that could apply maybe, maybe yes, maybe no, use of known technique to improve similar devices in the same way, applying a known technique to a known device ready for improvement, to yield predictable results, obvious to try known work in one field of endeavor, prompting variations in another, similar field. All these things, again, they were originally developed in the field of utility patents. And it's easy to see how these things apply when you have functionality in mind, but when it's ornamentality, that's, you know, decorativeness, something that's attractive to the eye that's in mind, it's not clear that these things will apply in the same way. And as we all know, there are many ways to skin a cat, and trying to decide whether or not these motivations will be viewed as sufficient or not in a design patent context is something that we need to think about, and that, you know, will come up in litigation going forward as these cases proceed. And

Speaker 2  48:07  
if you think about like the the the animal backpacks, on the one hand, you could say a nose, and nose is a nose, but if I put an elephant nose on a giraffe, is that really an appropriate substitution that would be obvious on what people are going right? So in the context, yeah, it gives you a predictable result. The predictable result is a weird looking nose, right? But is it that, does it become something that is the ornamental esthetic that would be obvious to a dosa at the time that they're designing it and and so we may probably end up with new and different motivations. We do have existing caseload as developed, but you know now we're told KSR says we should be flexible in design patents, like we were flexible in utility. But do we know how we'll be flexible? That's that's one of the open questions that resides out there. So now we're going to talk about infringement. Is judged by the ordinary observer. And I love this picture, because in this picture, you have things that look the same, but when you look next to them, don't necessarily. They do look different too, from an ornamental aspect. So the the seminal case now is, is, is the Federal Circuit impact decision from 2008 of Egyptian goddess versus swissa. And when we wrote our Oxford note on this back in 2009 the way we summarize the case was design patent infringement is determined by comparing products with the patented design from the perspective an ordinary observer knowledgeable of the prior art, and not by a separate point of novelty inquiry. And so when you're talking about point of novelty inquiry, if you remember David. Was talking about the second factor. What's the differences between the prior art and and the ornament and the claimed ornamental design? Those are the points of novelty. So what? What does that mean in practical effect, right? Well, well, the way the Egyptian goddess described it is when the claimed and accused designs are not plainly dissimilar. Resolution of the question whether an ordinary observer would consider the two designs to be substantially the same. Will benefit from a comparison of the claimed and accused designs with the prior art. This was a big difference that you had to put the prior art in there in addition to the claimed and accused designs. And they talk about examples as the Whitman saddle, where the differences between the claimed and the CU designs may not be noticeable in the abstract, can become significant when the hypothetical ordinary observer who is conversant with the prior art is looking at it in the context of the prior art. So here was the analysis that they put in the opinion they had the fairly buffer block. And the nail co design patent on a buffer block as prior art. And you can see the nail CO was a triangle cross section, and the failing buffer block was a rectangular cross section. The Swiss buffer was the accused product and the design patent is the 389 design patent. So when you do the analysis, you always need to have the prior art next to the patented designed as well as the accused to understand whether what is similar and different from the patented design and the accused product existed in the prior art or didn't. And so it's to it's the analysis that you typically would do, and sometimes, if the prior art looks wildly different, if the accused product looks more like the patented design than the prior art, you're more likely to find infringement than if the accused product it looks more like the prior art than the patented design, or if all of them look basically the same, then even minor differences are going to be drawn out more quickly. So we're going now talk about what design patents are worth. And what we want you to think keep in mind is that the traditional damages that you used to from utility patents of a reasonable royalty or lost profits of the patent owner when but for shown or attorneys fees and travel damages when it's an exceptional case are applicable for both utility and design patents, but design patents has its own, its own statute of additional damages that are available that includes The lost profits of the defendant, and not less than $250 for the each infringement. But there's a limit against double dipping that you can only get recover for the same loss once, but you can recover the most expensive way if you want. And so we summarize that as the damages that are available or reasonable, royalty or lost profits, attorneys fees and trouble damages you can always get in exceptional cases beyond that, but you could also get the infringers profits, but no double dipping, as we try and illustrate here. Damages can be an awful lot. Uh, Apple versus Samsung is the example of the case back in 2011 that made everyone rethink the use of design patents. And here, you know, you can see the design patent on the left and the and the infringement on the right, the design patents ultimately awarded half a billion dollars to Apple for the infringing designs, while the utility patents get out whopping 5.3 million. So you know, design patents can be very profitable and very useful, and we should make sure that we keep doing that. So let's talk a little bit about strategies. And I think one of the things to keep in mind is we're used to track one patent in patent prosecution for accelerating examination for design patents, they do not have the same acceleration. They have the old acceleration examination model, which means you need to do a search and explain why the invention is patentable. The patent term is from issuance, not filing. So this can ultimately, in some circumstances, lead to a longer patent term, depending upon how long it's pending. And whether you use continuation practice, there is a six months priority due date for foreign filing. So again, be careful. There is no claim of priority to provisional applications, but you can claim priority to earlier non provisional applications, both utility and design, as long as you have the support like in any other continuation. And I think the most important thing to remember is your claim is only as good as the drawings. So this is a time when it's worth spending a little extra money to make sure you get the drawings right. A couple strategy points that we think are important is that the use of dash lines are very helpful. This is an example of where we got a design patent for Stuart Weitzman, where it was all about the top of the sandal, and it didn't matter what the heel was, so we dashed the heel on what we were doing and and by dashing the heel, it didn't matter whether it was a flat or whatever the heel was on the bottom, but it covered whatever was the shape of the sandal top. But the Federal Circuit teaches us that, you know, a good thing too much of a good thing is not good. Here we have the gammon versus Campbell case, 2019 on the left, you can see the the gammon product that was this can dispenser that could be used. In the middle, we see the design patent where they dashed, 90% of the design as being merely environmental and only had very small things that were considered not dashed. And on the right, you can see how the Federal Circuit drew removed all of the dashing and was left with very little of the ornamentality to determine whether it was valid and infringed. Well, for infringement, it's easy to make it that you infringe. For validity, there was nothing left to distinguish it from the prior art, and they ended up invalidating the patent. So what's the lesson learned? Using dash lines is useful and important over using it can be not useful and harmful. David, why don't you talk a little bit about the dual strategy that we put in place with the whiskey bottle and how trade dress can be used in combination with design? Patent?

Speaker 4  57:40  
Sure. So there are different ways to protect different aspects of intellectual property and design patents are to some extent, potentially similar to trade dress protection. Now, obviously they the logic behind them is different because trade press protection requires that a certain design has become indicative to the public of a certain source of origin, but to the extent you do have a design For an object that may help distinguish you from others in the field that consumers come to think of as distinguishing you from other people, you can get trade dress protection in additional to design patent protection. Now the advantage of doing this is because design patent protection gives you certain you know, monopoly protection for 15 years from date of issue, trade dress protection to the extent that you continue to use the Same design, the same trade dress in commerce can be renewed perpetually for as long as you use it. So it's not necessarily limited to 15 years. Now, of course, there are different requirements for trade dress. It has to be something that's already in use. It has to be something that has acquired secondary meaning. There are different requirements, and also, to some extent, the damages you can get from infringement of a design patent and of a trademark are different, but protecting in both ways is possible. It does give you flexibility. It does allow you, perhaps, to extend the protection for a much longer term. So it's something that you should consider where appropriate.

Speaker 2  59:47  
I think the thing to keep in mind is that design patent is directed at New ornamental designs, new not non obvious ornamental designs, where trade dress is meant to protect a. Um, this is for me, it's your brand. And so to the extent that you become your trade dress, becomes you brick, ubiquitous with your brand. It has the value that allows it to go on forever. It doesn't need to be new, and it's something you could see later on, but it's part of a package which you can put together to give you protection that goes beyond where you otherwise are. So you'll love my common law usage of Alice in Wonderland from the original book in the 1800s one of the things about GUI design patents is they have no Alice issues. There's no patent eligibility concerns, as long as you present the claim properly. So it is another way of being able to say patented in your mobile app or your design and so in summary, some of the strategic thoughts for you to consider is the appropriate use of dashed lines using a series of design patents and third, third, 3d trade dress configuration registrations as part of a package that you can license, or other combinations of divine patents and other types of protection, potentially copyright or utility patents for the utility features and design patents for the design features, and that you can use the GUI design patents to give you protection for softwares where You might not otherwise have it because of Alice. And at this point we have questions, although there have been none, and I think we're close to the end. We'd like to thank autumn for hosting this webinar. We hope you found it all interesting. And I would like to remind those that are here live that we do have Autumn's eastern region and Western Region conferences coming up in September. For those that like software, we have the autumn University software course in October and of course in February will be, I'm sorry, March will be the 50th anniversary, Autumn celebration, annual meeting in Washington, which promises to be truly amazing. And thank you to autumn for having us. And without any further ado, we like to say we're done. Thank you. All right.

Speaker 1  1:02:37  
So on behalf of autumn, I'd like to thank you, Charlie, David and Thomas for presenting this session today. All you folks out there, recording of this webinar will be available for viewing in the autumn Learning Center within about a week from today, and that is included in your registration. So if you want to go back and review anything, you will be able to do that. Yeah, thanks and everybody. Have a great day.

Unknown Speaker  1:03:05  
Thank you for having thanks. Anne, thanks for having us. Bye. Bye.

Transcribed by https://otter.ai