U.S. Design Patent Protection. Finnish Patent Office April 10, PDF Free Download

U.S. Design Patent Protection Finnish Patent Office April 10, 2018

Design Patent Protection Presentation Overview What are Design Patents? General Requirements Examples Examination Process 3

What is a Design Patent? In the U.S., a design patent is a form of legal protection granted to the inventor of an ornamental design for an article of manufacture. 35 U.S.C. 171. Ornamental designs of jewelry, furniture, electronics, computer icons, beverage containers are examples of objects that are covered by design patents. 4

How is a Design Patent Different Than a Utility Patent? A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Design Patent has 15-year term from date of issue as compared to 20 years from filing for utility patents. 6-month right of priority as compared to 12 months for utility applications. Cannot claim priority to a provisional application, but can claim priority to utility application (utility can claim benefit of prior design application). Not included in the Patent Cooperation Treaty (PCT). 5

What are the Advantages of Design Patents? Shorter prosecution - Typically 1 2 years as compared to a utility patent (typically 3+years). Average of 13 months to issue for applications that were never rejected, 23 months when at least one rejection is issued and 16 months on average Significantly less expensive - Typically, less than half the cost of utility applications. Only a few hours of drafting time required. No maintenance fees (maintenance fees for Utility $1600 at 3.5 yrs, $3,600 at 7.5 yrs, and $7,400 at 11.5 yrs) Not subject to the publication requirement (except Hague). Kept secret until issue 6

What are the Advantages of Design Patents? Higher Allowance Rate only 25% have an initial rejection, and only 4% are finally rejected Additional level of protection if utility patent is invalidated as the Patentee can sue for both utility and design patent infringement. Design Patent may survive an invalidity examination that the utility patent might not be able to. Greater potential damage recovery versus utility patents. Potentially easier to prove damages in design patents (total profit analysis) than in utility patents (reasonable royalty or lost profits analysis). 7

What are the Advantages of Design Patents? Damages Recovery of total profits available to design patentee (35 USC 289) Not available for utility patent What are the Advantages of Design Patents? Can be easier to prove than reasonable royalty and lost profits which is available under 35 USC 284 Cannot treble total profits, but can treble reasonable royalty or lost profits Cannot double recover by also getting lost profits or reasonable royalties Can obtain attorney s fees in exceptional cases

Requirements for Design Patentability Design Patents-Subject Matter 35 U.S.C. 171 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

Requirements for Design Patentability The requirements for design patentability are: 1. Article of Manufacture it has to be a tangible object made by man. Can also cover just part of an article, e.g., a handle of a carrying case. Cannot be a design or picture standing alone. 2. Originality Cannot patent objects, persons, or naturally occurring forms. Must be original and not derived from another. 3. Novelty Must be new and not substantially similar to appearance of a prior art design. Must satisfy the requirements of 35 USC 102. Ordinary observer test: the overall appearance in the eyes of the ordinary observer must not be substantially similar to the prior art 4. Non-Obviousness Must not be an obvious design change over the prior art for an ordinary designer. Must satisfy 35 USC 103. 5. Ornamentality Created to enhance appearance. No utility required, but can be related to function. Feature cannot be the result or merely a byproduct of function, or dictated by function alone. 8

Requirements For Filing Design Patent Specification -Preamble stating name of applicant, title of design, and brief description of nature and intended use of design. Brief description of drawings. Single claim, e.g., We claim: the new, original, and ornamental design for a [Title], as shown and described. 9

Claim, Spec, and Description Example - iphone 10

Requirements For Filing Design Patent Drawings - Most important element Filing incorrect drawings can cause serious problems during prosecution. A skilled, experienced draftsman familiar with USPTO practice should be used to prepare the drawings. Need sufficient number of views to disclose the complete appearance of the design claimed. Typically: top, bottom, left side, right side, front, back, and perspective views are needed, but could use less views, if, for example, one view is the same as another view. 11

Drawing Requirements Solid lines (e.g., _) represent claimed subject matter. Broken or dashed lines (--) represent unclaimed subject matter, i.e., environment related to the claimed design, but not part of it. Deciding when to use solid or broken lines is a strategic decision. Surface shading may be used to show 3-dimensional aspects of the design. Photographs and color drawings can be submitted 12

Drawing Examples - iphone Notice that only the front face of the iphone is in solid line (claimed). The rest is broken line (unclaimed subject matter). Surface shading is used to show 3-D aspects of the design. 13

Drawing Examples - iphone 14

Drawing Examples - iphone 15

Drawing Examples - iphone 16

Drawing Examples - iphone 17

Drawing Examples - iphone 18

Drawing Examples - iphone 19

Drawing Examples - iphone 20

Child Design Applications A design application can be filed claiming priority to a prior U.S. design or utility application Remember, only a 6-month right of priority under 35 U.S.C. 119(A) (D) for designs Can disclaim views not supported by the drawings of the utility application

Example of Potential Damages The Patent shown above, is U.S. Patent D618677, which Apple used, among other patents, to initially generate a $1 billion dollar jury award against Samsung. $980 million of the jury award was initially attributed to, inter alia, this design patent. 21

The Design Application Examination Process Application process before the United States Patent and Trademark Office. Full examination on the merits (like utility applications). Not a registration system. Must satisfy the requirements of definiteness ( 112), novelty ( 102), obviousness ( 103) and patentable subject matter ( 101). USPTO fees for design applications are less as compared to utility applications (filing fee $480). Prosecution is typically much quicker than utility applications Average of 9 months to first office action. Average of 15 months from filing to issue. Can expedite by filing request and paying additional fee ($900).Typically have final disposition or issuance within 5 months. 22

The Design Application Examination Process Hague Agreement filing now available through United States (Effective May 13, 2015). Increases patent term from 14 years to 15 years (no 5 year renewals required). Finland is a party to the Hague Agreement, which enables Finland to file a single International Design Application (IDA) to obtain design protection in multiple countries. WIPO reviews IDA for formalities and forwards to designated intellectual property offices for consideration/examination. Published 6 months from date of filing. 23

Benefits of Hague Filing Simplified Process. Use of foreign counsel reduced. Multiple designs in one application (100 max). Provisional rights granted for publication of international registration. Can delay publication in some countries (U.S. 6 month default). 24

Limitations of Hague Filing Many important jurisdictions still not members: China, Mexico, Australia, Taiwan. No universal drawing standard (shading, broken lines, views, explanation of design). U.S. still allows only 1 design per patent (restricted designs may be filed in another IDA or in a domestic divisional). Replies to WIPO notices must be filed with WIPO, not USPTO. USPTO Filings require local agent (information disclosure statements, declarations, office action responses). 25

Design Patent Infringement Courts determine whether a design patent has been infringed by using the Ordinary Observer Test: [i]f in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1872). Must compare patented and accused designs in view of prior art, not in a vaccum. 26

Ordinary Observer Test Focused on the overall appearance of the accused and patented designs Not necessary that every aspect of the designs be identical Ordinary observer is the average purchaser for the item (ordinary consumer for the product)

Point of Novelty Test Points of novelty are no longer separately analyzed, but are instead used to attach importance to the differences between the overall appearance of the claimed design and the prior art e.g. Egyptian Goddess Case

Test for Infringement Ordinary observer test is the single test to prove design patent infringement Although point of novelty is not an independent test, must still compare patented and accused designs in view of the prior art Patented and accused design are not compared in a vacuum

In Sum. Design patents provide a cheap, high-speed, high-allowance addition to traditional utility patent protection. Potential profits can be huge. Hague Agreement makes it easy to file internationally. Law on design patents is constantly changing future decisions could further strengthen protection provided by design patents. 27

Examples of Design Patents

Questions about Design Patents? 28

QUESTIONS? Robert Michal +1 (631) 501-5700 rmichal@cdfslaw.com 43

THANK YOU! KIITOS! 445 Broad Hollow Road, Suite 420 Melville, New York 11747 (631) 501-5700 (Telephone) (631) 501-3526 (Facsimile) 44

U.S. Design Patent Protection. Finnish Patent Office April 10, 2018