Tuesday, May 25, 2010
Friday, May 21, 2010
Both amici train their initial arguments on the notion that design patents protect the claimed overall appearance of an article of manufacture, regardless of which elements are functional and which are not. For example, Apple succinctly fashions a rule from weighty precedent (including Bonito Boats) that removes direct consideration of the functionality of individual elements from both infringement and validity analysis. The AIPLA, on the other hand, backs into the notion that design patents protect the overall appearance of a design by citing other, less weighty precedent, while calling attention to the tension raised between Egyptian Goddess (analyzed here) and the panel decision in this case.
However, Apple and the AIPLA take different approaches to further augment their positions. Apple devotes the bulk of its analysis to an assault on what it terms a false “ornamental/functional” dichotomy. In essence, Apple attempts to establish that functional features are also ornamental because the functional features contribute to the overall appearance of an article. Apple also asserts that functional features have been considered to also be ornamental by the CAFC in previous cases, such as Elmer v. ICC Fabricating, Inc. Therefore, Apple argues, they should not be excluded from protection during claim construction.
The AIPLA takes a more conventional approach first by asserting that the panel decision in this case ignores CAFC precedent (such as Elmer) and second by arguing that the panel decision in this case is simply bad policy. In particular, the AIPLA argues that factoring out functional elements during claim construction unwisely weakens design patent validity and enforceability by effectively vitiating the presumption of validity and by reducing the basis of enforcement to only a subset of the elements claimed.
The amici also differ in the part that functionality should play in design patent jurisprudence. Apple espouses the use of functionality to challenge the validity of design patents and proposes a rule that a design patent is valid unless “there are no alternative designs that perform substantially the same general function as the overall claimed design.” The AIPLA solution, in contrast, would allow the fact-finder to “identify and discount the functional nature and purpose of elements when comparing the patented and accused designs.”
Filtering functionality out of the basis for enforcement is certainly not new to intellectual property law (see, e.g. the Abstraction-Filtration-Comparison test used to find substantial similarity of software under copyright law). But, as well articulated in the briefs discussed above, such an approach is awkward to apply when dealing with designs of articles that inherently embody functional characteristics. Hopefully, the CAFC will take the opportunity presented by this petition to provide precise and coherent guidance as to the role functionality should play within design patent law. The CAFC has yet to address the petition for rehearing of the panel decision en banc.
Wednesday, May 19, 2010
Monday, May 10, 2010
Since its adoption in 2003, very little has been written in the United States about Community Designs. As an active practitioner who files several design patent applications in the United States and in select foreign countries each year, I often wonder why this valuable tool has not been utilized more by my clients. My experience from my clients is that they are more concerned with protecting their designs in Asia, and in China in particular, and view Europe as somewhat of an afterthought. However, with the advent of Community Designs protection in Europe appears to have become more attractive.
As with rights conferred by a design patent, a Community Design protects the appearance of the product in question. The product can be any type of item, including packaging, graphic symbols and typographic typefaces. One significant benefit of Community Designs is that Community Designs are enforceable in each Member State. As of the date of this entry, there are 27 Member States. A registered Community Design can be extended up to a maximum of 25 years from the filing date provided that it is renewed by the owner. A Community Design must be published within 30 months of its filing date.
The Office for Harmonization in the Internal Market touts the following advantages of registered Community Designs as compared with national protection schemes provided in Europe:
- a single legal system provides a strong and uniform protection throughout the European Union;
- a single application rather than several applications in select countries;
- a single language of filing;
- a single administrative center rather than dealing with several patent offices;
- a single file to be managed;
- a single payment;
- the possibility to file multiple applications (i.e. to include several designs in one application, such as a whole range of similar products);
- the possibility to keep the design undisclosed for up to 30 months to avoid competitors learning of it; and
- an exclusive right to use the design and to prevent any third party not having consent from using it.
What are your experiences with Community Designs? Have you found them to be an efficiently procured and effective means of protection for your clients?