Interesting Designs of the Week

What do these designs have in common?

A clock:

a glove:

and a torch:

Protecting Typeface - A Design Patent Monopoly?

As discussed in previous posts within The Ordinary Observer, software is rich with intellectual property rights. Although not often discussed, fonts[1] are one aspect of software that reveals an interesting interplay between branches of U.S. intellectual property law.

Given that U.S. copyright law protects “original works of authorship” including “pictorial” and “graphic” works, one might assume that U.S. copyright law could be used to protect typefaces. Indeed, in some countries, (perhaps most notably the U.K.) typefaces are protected by copyright law. However, the U.S. Copyright Office refuses to register copyrights in typefaces. The Office argues that under U.S. copyright law fonts per se are not subject to copyright and, according to the rules promulgated by the Office, “typeface as typeface” is not protectable. 37 CFR 202.1(e).

Courts appear to agree. For example, Eltra Corporation v. A Ringer held that typefaces, as such, are not protectable under U.S. copyright law. The court stated the following while flatly dismissing the argument that U.S. copyright law should protect a particular typeface, “Under Regulation 202.10(c) it is patent that typeface is an industrial design in which the design cannot exist independently and separately as a work of art. Because of this, typeface has never been considered entitled to copyright under the provisions of § 5(g).”

Yet within the realm of computer technology, the data that implements a typeface, i.e., a font, is (like most other software) subject to copyright. For example, Adobe vs. Southern Software, Inc. held that scalable fonts (such as TrueType font implementations are software and therefore subject to copyright protection under U.S. law). It is this protection of fonts that developers of open source fonts, such as the Liberation fonts, use to give legal basis to their licenses.

Nevertheless, protecting typefaces via the software that implements them is an incomplete solution. Design patents can be used to fill this gap. MPEP 1504.01(a) III. Design patents protect the actual typeface of the font itself, regardless of how the shapes that make up the typeface are rendered. For an example, D570903 is directed toward a numeric font. Thus, under U.S. law, design patents provide an important means for protecting a typeface that is the essence of a font.

[1] Font data is used by a computer system to render characters that subscribe to a particular typeface. A typeface, in contrast, is a specification of the shapes and markings that make up a particular group of characters. Thus, a typeface is a design specification that exists outside of, and extends beyond, any particular implementation of the typeface, e.g. a font.

Filing Design Patent Applications in China and Taiwan

When filing design patent applications in China and Taiwan, the practitioner should be aware of unique filing requirements and potential pitfalls she may encounter when filing such applications, especially concerning the drawings. I just finished prosecuting several applications for various clients in China and Taiwan, and I thought this may be a good opportunity to review drawing filing requirements in these countries of growing importance.

In the United States, the rules are somewhat less strict with respect to multiple embodiments, shading and hidden features. When prosecuting a U.S. application, I have taken the approach of including all embodiments within a single application, with the hope that the USPTO will examine all embodiments. As far as representing the claimed design, I like to show all features, with solid lines illustrating “must have” components of the design and dashed lines illustrating non-essential components. Anyone who prepares and prosecutes a fair number of designs patent applications knows that it is not easy to decide what design elements are important (represented by solid lines) and unimportant (represented by broken lines or even deleted). With shading, I usually leave it to my draftsman, who does a nice job representing the surfaces of the claimed design.

In China, the practitioner needs to be aware that the Chinese Patent Office will require drawings without shading and broken lines. The elimination of shading and broken lines may impact decisions made during the U.S. filing. For example, rather than representing non-essential components with broken lines, perhaps it is a better practice to eliminate non-essential components totally. However, I am reluctant to adopt this approach since the claimed design may not be accurately represented. Regarding multiple embodiments, China adopts the same practice as the U.S. – the practitioner may file one or more divisional applications. I find consultation with my respective counterparts in each country to be the best tool for determining when the divisional application must be filed.

In Taiwan, while allowing shading and broken lines, the Taiwanese Patent Office requires that all embodiments must be represented in separate applications. Thus, when claiming priority to a U.S. application, for example, the practitioner needs to be aware that a multiple embodiment application needs to be broken into separate applications prior to filing. This may prove difficult when waiting until the last minute to file.

Prior planning can make it significantly easier for the practitioner when filing design patent applications in China and Taiwan. What has your experience been?

Beach and Summer Designs

First RCD Decision Issued by the European General Court

In overturning a lower court decision, the ECG (European General Court) provides useful guidance on the interpretation of definitions and concepts in European Community Design Law. In particular, the ECG weighed in for the first time on whether a particular Registered Community Design (“RCD”) is in conflict with another previously registered design. Some basic information on Registered Community Design can be found here.

PepsiCo, Inc. owns the RCD shown below (left):



PepsiCo’s design was filed on September 9, 2003, and claims priority to a Spanish registration filed on July 23, 2003. The design was classified as a “Promotional Item for Games.” The owner of an earlier filed (July 17, 2003 with a Spanish priority claim of July 8, 2003), but later published design, Grupo Promer Mon Graphis SA (‘Grupo’) (above -right), requested that PepsiCo’s registration be cancelled. Grupo argued that PepsiCo’s registration was done in bad faith, as Grupo had disclosed their designs to PepsiCo in confidence and that the two designs were “in conflict.”

The ECG reviewed the first determination by the Office for Harmonization in the Internal Market (OHIM) that the PepsiCo’s registration was “in conflict” with Grupo’s earlier RCD, and its subsequent reversal by the OHIM Board of Appeal. The Board had rejected Grupo’s bad faith argument and reversed the OHIM determination that the designs were in conflict.

The ECG agreed with the Board on the determination of bad faith. The ECG found that bad faith was not a valid ground for determining invalidity based on the Regulation governing RCDs. (The Regulations can be found here). However, the ECG disagreed with the Board’s ultimate decision that the two designs were not in conflict. As the Board set forth, and the ECG agreed, a design is in conflict if it produces the same overall impression on an informed user, taking into account the freedom of the designer in producing the design. The approach seems quite similar to the “Ordinary Observer” test used in the U.S.

The ECG opined on the degree of freedom of the designer, which deemphasizes common features of a design where the degree of freedom of the designer is limited, almost akin to the US approach of ignoring functional features of a design. Although recognizing that in the narrow category of “pogs,” “rappers,” or “tazos” the degree of design freedom is severely limited, the ECG still determined that the difference between PepsiCo’s and Grupo’s designs were not sufficient to produce a different overall impression.

Rather than the current approach of filtering out functional elements, perhaps the U.S. approach could benefit from consideration of “degree of freedom” when applying the Ordinary Observer test. It seems the approach of deemphasizing common elements rather than outright exclusion of elements could alleviate some of the criticism of the recent Stanley decision (analyzed here).

Designs of the Week

Statue

Weenie and marshmallow roaster

Kiosk

Toothbrush

Any guesses as to what this is?

Design Patent Relationships with Other Forms of IP Protection

Design patents protect the new and original ornamental characteristics embodied in, or applied to, an article of manufacture. Although the protection offered by a design patent is somewhat limited, recent decisions such as Crocs, Inc. v. International Trade Comm’n. and Egyptian Goddess, Inc. v. Swisa, Inc. have bolstered the ability of patent owners to prevent others from making, using, or selling products that closely resemble the patented design. This form of protection can be especially valuable for products that have achieved commercial success and widespread consumer recognition, and are thus more susceptible to imitation. A design patent can represent one facet of a multi-faceted approach to guarding your IP. Therefore, it is worth considering the interplay between design patents and other types of protection.

Copyright

One area of overlap exists between design patents and copyrights. The ornamental design of a product may also be a copyrightable work of art, and such a copyright can coexist with a design patent. Furthermore, section 1301 of the copyright statute explicitly states that “the designer or other owner of an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public may secure the protection provided by [the copyright statute].” While that sounds intriguing, Congress has thus far limited the scope of “useful articles” to designs of vessel hulls and decks, though there have been efforts to expand copyright to other types of articles, such as fashion designs for clothing, handbags, belts and eyeglasses. A discussion of what constitutes an “original design” is beyond the scope of this article, but it is generally defined as any distinguishable, non-trivial variation over a prior work of art. Furthermore, neither copyright nor design patent protection extends to designs that are dictated solely by a utilitarian function. Also excluded from section 1301 are illustrations that are not embodied in an article, such as drawings, photographs, brochures, etc. Copyright for a design of a useful article begins upon registration with the U.S. Copyright Office and expires after about ten years, whereas a design patent becomes effective after examination and issuance, and is valid for a term of 14 years from grant.

Several important distinctions occur with respect to infringement of copyright. It is an infringing act to make, use or sell an article embodying a copyrighted design; however, infringement only occurs when the infringer had knowledge that the design was copyrighted. This mirrors other aspects of copyright law, where “copying” is the key to proving infringement. The mere coincidence that two articles share the same design is not enough. In this regard, design patents offer a more powerful form of protection because, once the patent issues, the world is placed on notice that the design is patented, and the lack of knowledge of an infringer is not a defense to infringement. Another notable distinction is that the Copyright Office does not assess the originality of a design before issuing a Copyright registration. Therefore, a copyright owner has the burden of establishing the originality of a design during litigation. Nonetheless, an applicant for a design patent need not choose between having either the patent or a copyright, because both can work in harmony to protect the same design. Additionally, the USPTO will allow the inclusion of a statutory copyright notice within the design patent.

Trademark

Design patents may also overlap with trademarks, which can be used to associate a design with a unique source and also to exclude imitators and free-riders. In fact, a design patent and a trademark can exist for the same article. Design patents and trademarks coexist peacefully because the rights acquired from each are neither dependent nor conditioned upon the other. Trademarks for designs which are in continuous use may be valid indefinitely. As with copyright, the USPTO allows trademark notices to appear in a design patent as long as the trademark is in legal use under federal trademark law.

Utility Patents

Not to be discounted is the relationship between design patents and utility patents. While each type of patent serves a different purpose, some inventions may qualify for both types. However, care must be taken to avoid a situation where one patent anticipates the other (i.e., the design is no longer novel in light of its disclosure in an earlier patent). For example, if a utility patent or patent application includes drawings showing potentially patentable ornamental designs of the invention, those drawings could become prior art that would lead to a rejection of a design patent application claiming the same design. This is an important consideration for applicants who may initially be focused on a traditional utility application, and then later (perhaps after achieving some success with the product) decide that the invention’s design is also quite valuable. While copyright and trademark may still provide avenues to pursue copycats, the relative inexpense of acquiring a design patent and the concomitant benefits (e.g., injunctions and damages) may counsel toward filing both utility and design patents for the same invention in situations where the ornamental design of the invention is unique.

One method of preserving rights across multiple patents is to utilize the statutory right to claim the benefit of an earlier filing date of another patent application. Design patents may claim priority to utility patents, and vice versa. However, a design patent may not claim priority to a provisional utility patent application (and there is no such thing as a provisional design patent application). As with utility patents, the design patent application must be filed during the pendency of any U.S. utility application to which it claims priority.

Conclusion

The USPTO processes more than 25,000 design patent applications per year, but this number is a drop in the bucket compared to utility patent and trademark applications, as well as an unknown but presumably huge number of copyrighted designs that are constantly being created. This suggests that many are not taking advantage of the opportunity to diversify their IP protection by considering design patents.

A food storage container having both a utility patent (top) and a design patent (bottom).