Today I am in Toledo, Ohio, at the University of Toledo College of Law. The College of Law and Professor Llew Gibbons, who is Chair of the Board of Directors for the Confucius Institute, and are the hosts for Doing Business in China. Thisall day program will discuss the advantages of doing business in China for small and mid-size corporations. It is hoped that the program will dispel myths and provide useful information with respect to helping businesses decide whether they should consider doing business in China.
One of the first topics discussed this morning relates to patent examination standards in China. Thomas Moga, a partner with Shook, Hardy & Bacon LLP, explained that businesses should be considering getting patents in China to keep others from using your IP, to develop a portfolio for cross-licensing and to stop counterfeiting. Moga explained that while he cannot say that enforcing rights in China isn’t without problems, but one thing is for certain — if you don’t obtain patent rights you have no chance of enforcing rights in China. “One of the reasons foreigners have in China is they don’t take advantage of the system, which is because we don’t understand the system,” Moga said.
For over a decade, design patent filings and grants have enjoyed uninterrupted growth and, according to the 2014 IP Record, the trend continues unabated. According to the data, in 2013, 1517 more design patents were granted compared with 2012, and the prospects are good for continued growth in design patent applications.
The past decade has seen tremendous growth in design patent filings, increasing from 582,000 in 2004 to over 1,217,000 in 2012 worldwide. In 2012, the 17% growth over the prior year in applications was the highest one year growth seen since reporting started in 2004. Across the top 20 IP offices, those receiving the most filings in 2012, three-fourths saw a rise in applications over 2011. The overall growth of patents and trademarks, which reported a record year across the board, has persisted despite economic uncertainty in recent years.
Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will be wandering aimlessly and wholly incapable of making sound business decisions. Simply stated: Inventors who are completely unfamiliar with the patent process also won’t be able to help in any meaningful way with the patent process, and they will make poor strategic decisions that can lead to the loss of all rights.
So let’s start with the basics. A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. Simply stated, if you do not obtain a patent you have no exclusive rights. This is why inventors should never disclose their invention outside of a confidential relationship. Such a relationship is legally created immediately upon seeking professional advice from a patent attorney or patent agent, but in all other situations if you do not have a patent you should be extremely cautious about disclosing invention information without a confidentiality agreement. What others learn from you outside of a confidential relationship can be used with or without your permission, and without giving you any compensation.
Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights whatsoever. It is extremely important to keep detailed invention records in case you ever need to prove the particular date you invented, which even in some extremely limited ways may still be relevant even under a first to file regime ushered in by the America Invents Act (AIA), but keeping such records will never provide you any exclusive rights. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.
WASHINGTON – The Department of Commerce’s United States Patent and Trademark Office (USPTO) today commemorated the issuance of the 700,000th design patent during a ceremony with United States Secretary of Commerce Penny Pritzker at Langdon Education Campus in Washington, DC. The patent for the ornamental design for a “Hand-Held Learning Apparatus” was issued to Jason Avery of Berkeley, California and is currently assigned to Emeryville, California-based LeapFrog Enterprises, Inc. (NYSE: LF). The ceremony also included the launch of a new Intellectual Property (IP) Patch developed as a joint project between the USPTO, Girl Scout Council of the Nation’s Capital and the Intellectual Property Owners Education Foundation (IPO).
“Design patents play a critical role in ensuring that America’s intellectual property system continues to be a catalyst for American companies and entrepreneurs to innovate,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee. “The design area has increased from twenty five and a half thousand applications in 2009 to just over thirty five thousand filings in 2013.”
While design patents have been around as long as utility patents, they have long been neglected as a source of potential value. But that is changing.
In a shifting tide that began five years ago, courts have begun favoring the plaintiff in design patent lawsuits by simplifying the standard for proving infringement on the ornamental features of a product.
The impact of the court’s shift in the infringement analysis was evident in December 2013, when a jury in San Jose, California, awarded $290 million to Apple Inc. The jurors heavily tilted toward the iPhone maker in its claims for damages against Samsung Electronics Co. Ltd., which had earlier been found to infringe on iPhone design features, such as using fingers to pinch and zoom on the screen.
Apple’s victory was hard won. The latest award was connected to a lawsuit that began two years earlier and had resulted in damages of $1 billion. That was reduced to nearly $640 million, with the remaining amount being litigated a second time.
If it has a unique appearance think design patent. This is the iPhone graphical user interface, US Design Patent No. D687,842.
Although the first Patent Act was enacted in 1790, it was not until some 52 years later that the US patent laws were modified to allow for the patenting of ornamental designs. In 1842 a statute was passed to provide for, among other things, the grant of patents for any new and original: (1) design for a manufacture; (2) design for printing on fabrics; (3) bust or statue; (4) impression to be place on an article of manufacture; or (5) shape or configuration of any article of manufacture. Subsequently, in 1902, the design patent statute was amended to define the allowable subject matter simply as “any new, original, and ornamental design for an article of manufacture.’’ This language mimicked the 1887 modifications to the Patent Act relative to infringement, and still closely represents the current law regarding patentability of designs.
The first design patent that was issued in the United States was issued to George Bruce on November 9, 1842. Only thirteen design patents were issued in the first year of eligibility.
So how many drawings were present in the first design patent issued? OK, this is a trick question. The surprising answer is that there were no drawings at all, which is at least a little bizarre based on practice today. But Mr. Bruce’s design patent covered a new typeface, which could be, and was, described in words rather than by claiming the ornamental design as shown, which would be what you would do today.
In this series, we are looking at how to create strong design patents and to use them to protect your business. In the first three articles, we looked at The Power of the Broken Line to protect the shape of your product, The Power of Color to protect your graphical images, and The Power of Portfolio to build a wall of protection around your product. In this article we are looking at the “The Power of Policing Trademarks and Design Patents”.
“Policing” means actively searching for people copying your product and enforcing both your trademarks and design patents against them. Patents and trademarks don’t stop copying. If you are successful, you will be copied. They do allow you, however, to shut down counterfeiters fast. We’ve expanded the scope of our discussion to include trademarks since trademarks are your first line of defense to stop “on-line” counterfeiting. The on-line shopping sites like Amazon, eBay and Aliexpress respect them and will remove knock off listings. Design patents come into play when the counterfeiting gets serious and you need to stop bulk importers of knockoffs.
Our case study of how a small growing company can use trademarks in combination with design patents to effectively stop knockoffs will be Olloclip®, a very popular 3-in-1 iPhone camera lens attachment.
MacWorld Conference & Expo 2007, San Francisco. Steve Jobs presents Apple’s phone.
In this series, we are looking at Apple’s design patents and their strategies for using them to protect the iPhone from being copied. In the first two articles, we looked at The Power of The Broken Line, and The Power of Color. In this article we are looking at the The Power of Portfolio. In the patent industry, a “portfolio” is a grouping of patents that each protect different aspects of the same invention. Patents are like shingles on a roof, there needs to be some overlap between them to provide complete protection.
On January 9, 2007, Steve Jobs introduced the iPhone to the world. It was an historic event. He was immensely proud of what Apple had accomplished and he made it clear he was going to defend it. Steve was passionate about both style and technology, so when he said “Boy have we patented it” he meant both design and utility patents. We are focusing on design.
In the past decade, design patent filings and grants have experienced continuous growth. The 2013 IP Record confirms that design patent filings and grants are still on the rise—658 more design patents were filed in 2012 than in 2011—and the data suggests that the trajectory of design patent applications is going nowhere but up.
Design patents are essential in protecting the ornamental design of consumer products and their components; the intense litigation of the Apple v. Samsung lawsuits stressed the importance of design protection. The significance of design patents to the Apple v. Samsung lawsuitappears to have affected other companies’ patent strategies as well. The fifty companies on the IP Record’s list of the top 50 U.S. design patent grantees for 2012 were collectively granted greater than 150 more patents than the top 50 companies of 2011. Samsung, the top design patent recipient in both 2011 and 2012, alone accounts for almost a third of this growth—it was granted 378 design patents in 2012, exactly 50 more than in 2011. Apple, the #7 patent owner in 2011, rose one spot in 2012 and acquired 25 more patents than its total in its previous year.
Editor’s note: This is the second in a four part series on Strong Design Patents. In this series, author Mark Nowotarski looks at Apple design patents and the strategies behind building a strong design patent portfolio. Part 1 was The Power of the Broken Line. Subsequent articles will discuss “The Power of the Portfolio” followed by “The Power of Policing.”
Color matters. For example, the success of Apple Computer’s recent lawsuit against Samsung was largely due to Apple’s design patent on a single color image of their iPhone graphical user interface (GUI). This design patent accounted for $725 million of the $1 billion jury verdict on damages. There were many differences between Samsung’s Galaxy phone GUI and Apple’s patented GUI, but the overall color schemes were sufficiently similar to convince the jury that there was a likelihood of confusion between the Samsung GUI and the Apple patented GUI. Hence Samsung infringed the design patent, and Apple was entitled to all of the profits Samsung made from the confusingly similar phones.
You can patent the look and feel of a graphical user interface. More precisely, you can patent an electronic device that displays a graphical user interface of a certain design by filing an image of the GUI with the USPTO as a “design patent.” If the overall design is new and not obvious, the design patent will be allowed and is valid for 14 years from the issue date. For the next 14 years, no one will be able to make, use or sell an electronic device in the US that displays a graphical user interface that is confusingly similar to yours. It doesn’t matter what the device is.
Design matters. For example, the success of Apple Computer’s products is due not only to their technical capabilities, but also to their aesthetic design, which Apple has justifiably protected with a substantial portfolio of design patents. Recently, Apple’s iPhone design patents and other intellectual property were under scrutiny in comparison with the Samsung Galaxy family of phones. However, because of the strategy Apple utilized when filing these patents, their counsel at trial was able to obtain a jury award of over $1 billion, $980 million of which could be attributed to infringement of the design patents[i].
In this four part series, titled Strong Design Patents, we will look at Apple’s design patents to see how to build a strong design patent portfolio. In this first article, we will look at “The Power of The Broken Line,” then “The Power of Color”, followed by “The Power of the Portfolio”, and lastly, “The Power of Policing”.
Design patents are deceptively simple. They are merely drawings or photographs of an object. They protect against someone else making a similar looking object. Infringement is determined by comparing the accused object against the figures in the patent. If the accused object is sufficiently similar to the figures so that a typical observer using normal care would confuse the two, then the accused object infringes the patent. The damages for infringement are either the lost profits of the patent holder, a reasonable royalty the patent owner would have received for a license to the patent or all of the profits the infringer made by selling the infringing devices, whichever is greater. It doesn’t matter how much of the value of the accused object can be attributed to the design. If the accused object infringes, the patent owner is entitled to the full damages.