Thursday, July 21, 2016

Continuation-in-Part Design Patent Applications

Deciding when and under what circumstances a design patent application can claim priority to an earlier filed application can be a challenging task. In particular, we often get asked whether a design patent application may be filed as a continuation-in-part (CIP) of an earlier filed design patent application. While the quick answer is yes, the disadvantages associated with CIPs often outweigh the benefits.

Tuesday, May 3, 2016

Design Patent Destinations - Hague Seminar to be Presented by WIPO in Geneva

If you're looking to travel and learn about international design patent application regimes, then look no further than WIPO's Hague Seminar, which is taking place on June 23 in Geneva, Switzerland.   The stated objectives of the Seminar are to give practical guidance to users when designating the United States of America, Japan or the Republic  of Korea in an international design application and to receive feedback from those Offices as Designated Contracting Parties.  You can access WIPO's brochure for the seminar here.

WIPO's Hague Convention seminar comes at an important point in the United States' adoption of the Hague Convention.  While the Hague Convention filing process has been available in the United States since May of 2015, surprisingly few applicants have applied for an International Design Patent through the United States Patent Office, as we learned this year at Design Day.  While the Hague Convention certainly presents a more streamlined and cost-effective approach to international design registration, uncertainty regarding regional differences in design practice may be slowing the adoption of the system here in the United States.  Hopefully, the WIPO seminar in June can help provide a clearer path for U.S. filers.

Monday, April 25, 2016

Sport Dimension v. Coleman Company - Federal Circuit Seeks to Clarify Functionality

Last week, the Federal Circuit issued an opinion in Sport Dimension, Inc. v. The Coleman Company, Inc., No. 15-1533 (Fed. Cir. Apr. 19, 2016), seeking to clarify how courts may properly construe design claims containing significant functional aspects.  The court's decision adds some weight behind last year's Federal Circuit decision in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., and answers a few additional questions related to design patent functionality.

In order to explain this case, we first have to see the problem.  To do that, we begin by looking back to the Federal Circuit's 2010 decision, Richardson v. Stanley Works, Inc.  That case concerned design patent D507,167 for a multi-function tool, and an alleged infringing tool designed by Stanley, as shown below:

Wednesday, April 20, 2016

Design Day Report from the Front Lines Slides

We've had a few requests for the slides from yesterday's Design Day - Report From the Front Lines presentation.  We're happy to share them with the usual disclaimers.  This presentation was prepared for educational purposes only and does not represent the opinions of either the U.S.P.T.O. or Lando & Anastasi.  Nor can we guarantee the accuracy of the underlying data presented, which was gathered from third party sources.

Here is a link to view and download the slides.

If you re-post or use the slides, please be sure to give credit to William Seymour of Lando & Anastasi, LLP and the Ordinary Observer design patent blog.


Monday, April 18, 2016

USPTO Requests Comments on Proposed Written Description Guidance for Design Patents

The United States Patent and Trademark Office has issued a Request for Comments on its proposed guidance to patent examiners regarding the written description requirement in Section 112 of the Patent Act with respect to design patents.  The proposed guidance would address situations where an amended or continuing application claims only a subset of the elements disclosed in an earlier or original application.  In other words, in the example below, if the original claim comprised the images on the left, can the amended claim cover only the subset of elements shown in solid lines on the right?

Wednesday, January 27, 2016

(Future) Motion for Temporary Restraining Order Granted

The annual Consumer Electronics Show (CES) provides a highly publicized venue for companies to showcase their cutting-edge technology and innovative designs.  Just days before this year’s show in Las Vegas, NV, one design patent owner prevented an alleged infringer from distributing, promoting, and offering to sell potentially infringing products.  Follow the jump to learn why an emergency temporary restraining order was granted to the design patent owner without an opportunity for the defendant to appear.

Tuesday, January 19, 2016

Design Patent Figures with 3D CAD Software

Similar to a utility patent, a proper design patent application will include (among other components) a description of the design, a claim, and one or more drawings or photographs. Since the drawing disclosure is often considered the most important element of the application, a great deal of care is generally taken when preparing the drawings. For instance, many applicants will enlist the assistance of a draftsman to prepare “formal” drawings. However, the service of a draftsman can be expensive, and we often get asked if there are alternative ways to prepare drawings. In particular, the question is often raised: can 3D CAD images, such as those prepared with SolidWorks, be used to satisfy the drawing requirement? Follow the jump for an answer and analysis.