2011 USPTO Design Day

If you are going to be in or near Alexandria on April 5, consider attending this free event sponsored by various organizations including the USPTO and AIPLA:

"Spend the day with United States Patent and Trademark Office Management and Examiners, Design Patent Practitioners and industrial designers from across the country in a lively and thought provoking discussion. We will discuss current issues in Design Patent Law, including the critical role that U.S. Design Patent Applications play in a global patent strategy, design appeals before the Board of Patent Appeals and Interferences."

For more information click here

Vanguard v. Bank of America

In affirming the BPAI decision in Vanguard Identifications Systems, Inc. v. Patent of Bank of America Corporation, the CAFC issued its first ever decision on an inter partes reexamination.

In this case, the claim was directed to a data card having a circular opening positioned near the right-hand lower corner of the side of the data card having a magnetic strip.




Other embodiments of the data card included positioning the circular opening at other locations on the card. Both of the primary references relied upon by the Examiner lacked the aperture, which formed the critical design component of the claimed design. The BPAI determined that since the circular opening was lacking from each primary element, the Examiner failed “to consider the Appellant’s claimed design as a whole by disregarding the visual impression created by the aperture in the patented design.” The BPAI failed to consider the Respondent’s argument that the circular opening was functional and therefore lacked ornamentality since the issue was not on appeal.

It appears that the BPAI made it easier for practitioners arguing patentability when it is clear that the primary reference lacks any indication of the claimed feature and the Examiner relies on the secondary references for the feature. Other than this benefit, I cannot help but think that it is too bad that the reexamination process does not allow the Examiner to reject the claim on another basis, such as lacking ornamentality.

Keith Noe
Lando & Anastasi, LLP (http://www.lalaw.com/)
KNoe@LALaw.com

Interesting Designs

From the Official Gazette of March 1, 2011:

Amazon Sued For Design Patent Infringement

Back in December, Mint, Inc. sued Shokomoko and Amazon.com for infringing its copyright, design patent, and trade dress rights. Mint is the owner of U.S. Design Patent No. D464,532, on a "spice shaker":



Shokomoko sells hugging salt and pepper shakers through the Amazon.com Marketplace:



(You can see one of Shokomoko’s listings here.)

At first glance, Shokomoko appears to have a problem. Putting aside the substantive for a moment, though, there are some interesting procedural issues that bear mentioning as well.

For example, Mint filed the suit in the U.S. District Court for the Southern District of New York. Yet it failed to allege that Shokomoko had sold any infringing products in the district. Therefore, the Court (apparently sua sponte) ordered the parties to “submit a (compelling) letter to the Court [. . .] setting forth the reasons why venue is proper in the Southern District of New York.” When no compelling reasons were offered, the case was transferred to the Southern District of Washington, where Amazon is headquartered. (Shokomoko is based in Israel.)

Had Mint been able to allege that a "substantial part" of its sales were in the Southern District of New York, venue would have been proper. (Considering that Manhattan is served by the Southern District of New York, that shouldn’t have been hard to do.)

At any rate, my guess is that this case will settle before it goes much further, given the striking similarity between Shokomo’s product and Mint’s patented design.

Interesting Designs

Product-centric Patenting: An Approach to Protecting the “Look and Feel” of Software Products

When asked why they wish to secure intellectual property rights, inventors often provide a succinct response: they wish to protect the “look and feel” of their product. The advantages of such protection are particularly pronounced in the realm of software implemented inventions, where interface design can make or break a product. Inexperienced attorneys often find fashioning protection for the look and feel of software products to be a vexing problem. Contributing to this difficulty is the fact that attorneys are trained to draft applications directed toward a single (or set of closely related) concepts. When presented with the bundle of ideas embodied in a single software product, it can be difficult to determine where to begin.

Fortunately, a combination of utility and design patents can often be employed to efficiently weave a web of protection for the look and feel of a product. Design patents lend themselves well to protecting the “look” of software implemented inventions. As discussed in a previous Ordinary Observer post (by Matthew Grady), design patents are increasingly being utilized to protect a variety of user interface elements. More specifically, design patents can be used to protect icons and other static graphical elements. In addition, the United States Patent and Trademark Office is presently issuing design patents that cover the movement and animation of these graphical elements. With these tools in hand, user interface innovations can be cost effectively protected using design patents.

Further, under a product-centric patenting methodology, utility patents can be used to augment and complement these design patents. Utility patents are well-suited to protect the “feel” of a software product by protecting both the innovative functions performed by the software product and, in some cases, the manner in which the functions are implemented. Utility patents can be used to cover a number of processes that, for example, lower the latency within the user interface, interoperate with other software products or efficiently store data to decrease the physical footprint of the hardware executing the software product. Thus, utility patents can be used to protect commercially valuable “under the cover” aspects of software products.

While protecting the complexity and innovation present within some software products can be a daunting challenge, careful use of design and utility patents can be used to create a web of protection for the look and feel of a software product in a cost effective manner.

Update: Fashion Design Protection

As discussed here a while back, Congress has been mulling over the idea of amending Section 1301 of the copyright statute - which currently only protects vessel hull and deck designs - to include fashion designs.

Well, things are starting to look up for the fashion industry. Yesterday, Senate Bill S.3728 (also known as the Innovative Design Protection and Piracy Prevention Act), which was introduced by Sen. Schumer of New York on August 5, was passed by the Senate Judiciary Committee. The bill, with minor modifications, now moves on for consideration by the full Senate.

Here are some highlights:

• Protects appearance as a whole of an article of apparel, including its ornamentation


• Covers clothing, undergarmets, outerwear, handbags, suitcases, belts and eyeglass frames, among others


• Must be original and unique


• Employs a "substantially identical" infringement standard, similar to trademark


• 3-year term of protection (10 years for vessel hulls)


• 3 year public disclosure bar (no registration required)


• Home Sewing Exception: a person may make a single copy of a protected design for home use only


• As with all things copyright, there is an independent creation defense (using a totality of the circumstances analysis)


• Does not protect illustrations or pictures of the design, such as in advertising (or, dare I say, virtual design representations)

I know many people have been pushing for this (and some not so much), so let's hope for the best balanced outcome.