Streamlined International Filing Soon To Be a Reality

Obtaining design rights in multiple countries will soon become easier for design patent applicants.

The United States is currently in the final stages of implementing an international treaty related to design rights known as the Hague Agreement.

The Hague Agreement simplifies the process for obtaining international design rights by allowing an applicant to file a single, standardized international design application that may then be pursued in any member nations designated by the applicant. This procedure is roughly similar to the one for international utility patent applications provided for by the Patent Cooperation Treaty.

On January 14, the USPTO held a public forum to discuss its proposed rules for implementing the Hague Agreement.

The proposed rules include the following major changes for design applicants:

• Standardizing formal requirements for international design applications;

• Establishing the USPTO as an office through which international design applications may be filed and examined;

• Providing a right of priority with respect to international design applications; and

• Extending the patent term for design patents from 14 to 15 years from the date of patent grant, for applications filed on or after the date of entry into force of the treaty with respect to the United States, a date which is still forthcoming.

Interested parties now have until February 4, 2014 to submit comments to the USPTO on the proposed rules, available here.

Design Patent Links - Jan. 27, 2014

Most of the exciting news in the design patent space in the last few weeks has been coming from the Federal Circuit.  But there have beet some smaller items in the news lateley,

Tracy-Gene Durkin and David K.S. Cornwell authored a summary of the Patent Trial and Appeal Board's decision to deny inter partes review in ATAS Int'l, Inc. v. Centria.  This decision is the first IPR decision regarding a design patent, and the denial seems to suggest that design patent defendants should seek to assert only a few solid references when seeking IPR.

PC World authored an article last Thursday about the preliminary injunction that Blackberry is seeking against Typo in the Northern District of California.  It will be interesting to see how the court handles the issue of contributory design patent infringement, which is not a common issue in design patent cases.

Kenyon and Kenyon issued a design patent notice about a finding of non-infringement in Cohen Harel v. KK Int’l Trading Co. in the Eastern District of New York.  The case involved refillable lighters and the court found on summary judgment that no reasonable trier of fact could find the designs of the two lighters substantially similar.

Finally, for those who may have missed it, Professors Andrew Torrance and Mark Janis participated in an "Evil Twin" debate regarding the scope, purpose, and value of design patents back in November at the University of Richmond School of Law.  The debate was unofficially titled  "Design Patents - Great Idea or Greatest Idea?"

Finally, it's not every day that a local design patent case makes the 5:00 news, but the latest design patent case by Alex & Ani against North Attleboro's Northeast Jewelers sounds like it is gearing up to be an interesting case!

Pacific Coast after the Federal Circuit - Windshield Vents in the Eye of the Ordinary Observer

Last week, The Ordinary Observer reported on the Federal Circuit's recent decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, holding for the first time that prosecution history estoppel applies to design patents, while finding in the case at bar that the patentee was not estopped from asserting its patent against the accused infringer.  We have noted since then that legal observers have followed this decision, and Pacific Coast has already issued a press release calling it a big win.  At this stage, it might be important to remind readers that this case may still have some legs left, and Pacific Coast may not want to open the champagne just yet.

Design Patent Links - Jan.21, 2014

Starting off this week's links with some good news in the patent world, a recent report shows that in 2012, worldwide patent applications saw their strongest growth in 18 years, with design patents ticking up by 17%, year over year.  This follows double-digit growth in design patent filings each year since 2010.  Of course, these numbers still lag behind the growth in utility patent filings over the same period.  Part of the recent surge is attributable to the increased participation of younger nations in the global marketplace; in 2012 for instance, Chinese residents led the world in new utility patent application filings for the first time.  Several questions remain.  How long can the market sustain double digit growth in new patent applications and what will governments, particularly the U.S. government, choose to do about it?  

Continuing on the international front, following the 24th U.S.-China Joint Commission on Commerce and Trade in December, China has further indicated that it will extend design patent protection to Graphical User Interfaces.  Readers of the Ordinary Observer may note that in we have reported on this subject before.  In October, the Chinese State Intellectual Property Office released a draft amended version of its Examination Guidelines, indicating for the first time that it was amenable to extending patent protection to GUIs and other so-called virtual designs. This is a significant step towards harmonizing U.S.-Chinese design patent law, as the United States has offered patent protection to so-called virtual designs for roughly twenty years.

In more consumer-driven news, several major technology companies are lighting up the technology blogs with design patent revelations.  First, Samsung and the U.S. PTO have joined forces to tease gadget journalists with newly issued design patents covering a foldable tablet, as well a new design rumored to be the next Galaxy series flagship phone.  On the enforcement side, struggling smartphone maker Blackberry has filed suit against Typo Products, LLC, the maker of a Bluetooth keyboard for smartphones which tends to evoke comparisons to Blackberry's iconic keyboard style.  The reactions from users and bloggers towards Blackberry's suit appear mixed, at best.   The lesson here appears to be that you can get press from both design patent suits and design patent grants, but the press for the former is very different than from the latter.

Finally, the Federal Circuit's recent decision in Pacific Coast Marine Windshields Limited v. Malibu Boats has succeeded in generating a fair amount of scholarship in its immediate aftermath.  See the following links for analysis of the decision, as well as The Ordinary Observer's own breakdown of the case. 

Design Patent Roundup - Jan. 17, 2014

The theme of this week’s design patent roundup is clearly automotive design patents. It might just be a coincidence that so many automotive design patent cases were filed this week, or the automotive industry may be getting nervous about the PARTS act. The “Promoting Automotive Repair, Trade, and Sales Act of 2013,” or PARTS Act, would reduce the effective life of automotive design patents covering collision repair parts to two and a half years. You can read the full text of the PARTS Act here. The PARTS Act was submitted to the House Committee on the Judiciary on April 23, 2013, but is still reported as having strong bi-partisan support. 

Federal Circuit Alert: Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC

Today brings us our first major Federal Circuit design patent decision of 2014. In a case of first impression, the Federal Circuit held yesterday that the principles of prosecution history estoppel apply to design patents. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 2013-1199, 2014 WL 53904 (Fed. Cir. Jan. 8, 2014). However, the court reversed the district court’s summary judgment of non-infringement because the accused infringing design was not within the scope of the subject matter surrendered during prosecution, and therefore remanded for further proceedings. 

You may recall that we previously discussed the district court’s decision in Pacific Coast Marine Windshields late in 2012. At the time, we predicted that prosecution history estoppel would become a valuable tool for defendants involved in design patent infringement litigation. In view of the Federal Circuit opinion, however, defendants will have a more difficult time showing that the accused design falls within the scope of the surrendered territory and is therefore immune to a patent holder’s assertion that the accused design is a colorable imitation of the claimed design.

The background for the case is discussed more thoroughly in our earlier post on the district court decision. Briefly, Pacific Coast accused Malibu Boats of infringing U.S. Design Patent No. 555,070 for a “Marine Windshield.”  A figure from the ‘070 Patent appears below alongside an image of the accused Malibu product:

While the two designs share many similarities, they differ in that the ’070 Patent shows four circular vents at the corner, while the accused device shows three rectangular ones. Of course, as courts have long recognized, for a design patent to be infringed it is not necessary that the accused device reproduce all elements of the patented design, since under such a standard infringement would never be found. Instead, “any colorable imitation” of the design will also be found to infringe. See 35 U.S.C. § 289.

However, during prosecution of the ‘070 Patent, the applicant canceled a number of figures in response to a restriction requirement from the examiner, including a two-hole embodiment shown below.

The district court ruled that, under a theory of prosecution history estoppel, the accused Malibu windshield fell within the territory surrendered during the prosecution of the ‘070 Patent and therefore Pacific Coast was estopped from asserting that the accused device was a “colorable imitation” of its patented design.

The Federal Circuit notes that the concept of “colorable imitation” for design patents is analogous to the doctrine of equivalents for utility patents. Therefore, prosecution history estoppel, which limits the availability of the doctrine of equivalents for a party asserting a utility patent, also limits the availability of infringement under the theory of “colorable imitation” in a design patent context.

Having concluded that prosecution history estoppel applies to design patents, the court gives us a glimpse into the analysis that must then take place in a design patent context to determine whether a plaintiff is estopped from asserting that the defendant’s design is a colorable imitation.

Whether prosecution history estoppel bars the infringement claim turns on the answers to three questions:

1. Whether there was a surrender;
2. Whether it was for reasons of patentability; and
3. Whether the accused design is within the scope of the surrender.

Applying these three questions to the case at hand, the court answered the first and second in the affirmative, but reversed the district court by finding that the accused design was not within the scope of surrender.

In finding that there was a surrender, the court noted that here, in response to the examiner’s restriction requirement, the applicant amended the claim by canceling figures associated with all but one of the patentably distinct groups of designs identified by the examiner – the four-hole embodiment – and striking references to alternate configurations from the text. It did not matter that the surrender involved cancelation rather than amendment. By removing broad claim language referring to alternate configurations and canceling the individual figures showing the unelected embodiments, the applicant narrowed the scope of its original application, and surrendered subject matter.

In finding that this surrender was for reasons of patentability, the court noted that this element will be satisfied whenever an amendment is made to secure a patent. The narrowing amendment need not be to avoid prior art, but a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel. In the design patent context, a surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary to secure the patent.

As to the third question, the court rejected the defendant’s assertion that the accused design was within the scope of surrender. The defendant’s theory was that in patenting a four-hole design while canceling the two-hole design, the patent holder surrendered the range of territory between the canceled design and the patented design, namely a design with three holes, such as the accused windshield.

The Federal Circuit rejected this argument, however, noting that while an amendment to a value in a utility patent claim surrenders the entire range between the original and amended value, the range theory is not applicable in the context of design patents where ranges are not claimed, but rather individual designs.  Claiming different designs does not necessarily suggest that the territory between those designs is also claimed. The applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design.

Notably, having rejected the defendant’s range theory for determining the extent of the surrendered scope, the court fails to definitively replace it. One obvious candidate for measuring the scope of surrendered territory would be to define that scope as all colorable imitations of the canceled design figure. The court notes this alternative but did not yet accept it. The court reasoned that they need not decide, in this case, whether the scope of the surrender is measured by the colorable imitation standard because it was not necessary to resolve the case. After all, the patent holder never asserted that the accused device was a colorable imitation of the two-hole design, and the defendant positively disclaimed that the two-hole embodiment was a colorable imitation of its accused design. 

So where are we left as a result of this case? We now know that the theory of prosecution history estoppel applies to design patents as a limit to the colorable imitation standard. We also know that cancelation of figures in response to a restriction requirement triggers prosecution history estoppel because it constitutes a surrender of territory for reasons of patentability. Moreover, we know that the range theory from utility patents for determining the scope of surrender does not apply to design patents. Finally, we have a strong hint from the Federal Circuit that the scope of surrender will extend to all colorable imitations of the canceled figure, yet no final determination on that matter.

As a result, design patent applicants must be more careful in handling prosecution to avoid being subject to prosecution history estoppel. Meanwhile, defendants will have to be more persuasive in showing that their accused device falls within the surrendered territory.