Design patents have been making the news.  Last summer, Apple’s $1.05 billion verdict against Samsung was famously based, in part, on the finding that Samsung infringed Apple’s rounded-rectangle and edge-to-edge glass designs.  Since then, Yamaha, Thule, Oakley, Nike and Spanx, to name just a few, have litigated in the U.S. over the design of headphones, ski racks, sunglasses, footwear and women’s undergarments.  And just last month, former head of the USPTO, David Kappos, published an OpEd piece describing design as “the new frontier of intellectual property.”

Nothing has fundamentally changed about the nature of design patents.  The first US design patent was granted in 1842.  The Statue of Liberty, Coke bottle, Volkswagen Beatle, Stealth Bomber and Star Wars’ Yoda are all protected by design patents.  Design patents have long played an important role in consumer electronics, automotive, apparel, jewelry, packaging and other industries.

But industrial design is becoming increasingly important, Mr. Kappos explains, because the increasing functionality of man-made devices brings with it increasing complexity, so innovative companies are constantly seeking superior designs, a convergence of form and function that helps make the complex simple and sets their companies apart; and protecting such designs is critical.

Patent stories don’t normally make the evening news or the major outlets unless one of the antagonists is called Apple. That changed this week when news broke that Spanx, makers of shapewear undergarments for women, founded by Sara Blakely had filed an action for Declaratory Relief against Times Three Clothiers, doing business as Yummie Tummie, in the Northern District of Georgia.

This didn’t sit well with Heather Thomson, founder of Yummie Tummie, who on March 13th, in an interview with Women’s Wear Daily, channeled her inner Steve Jobs when she threatened to go to war over the issue. Her quote to WWD was “I hope [Spanx] is ready for war because I will not lie down.” The story was supposedly “broken” by the Atlanta Business Chronicle on March 12th but I wrote a blog post on the DJ after I found out about it on March 8th. I start the morning by spending a few minutes looking at the patent lawsuits filed the previous day and when I came across this case I figured it would be fun to use it as an example of patent litigation, Declaratory Judgements and MedImmune v. Genentech. Little did I know that on March 13th, the WWD story would be picked up by The Huffington Post and in their research on the story they found my blog post and added it to their story.

The World Intellectual Property Organization (WIPO) publishes a yearly report of the worldwide intellectual property filings. World Intellectual Property Indicators 2012 estimates draw from approximately 133 Patent offices, and include direct national and regional applications and those received through the Hague system of international registration.

Design patent applications have experienced continuous growth for the past decade. Patent offices worldwide reported 344,700 new applications in 2004 and 775,700 in 2011. In the most recent years, the growth of design applications has accelerated, with a rate of 13.9% growth in 2010 and 16% in 2011. Of the top 20 origin countries, which are defined as the countries of residence of design patent applicants, nearly all saw growth in 2011. This trend reflects the overall growth of patents and trademarks, which reported a record year across the board. Despite economic uncertainty in recent years, IP growth has persisted.

This week Apple had a total of 34 patents issued, including four design patents and a number of patents focusing on improvements to user interfaces on various Apple devices, such as a design patent on an icon (see bottom). Other patents obtained by Apple protect a new method of removing blemishes while still maintaining image quality and an illuminable laptop latch.

Blemish Control
U.S. Patent No. 8385681

This patent represents a fairly substantial improvement to image editing processes, which has long been a staple of Apple systems. Graphic designers are able to retouch images in a number of ways already through computer software. However, removing unwanted marks and other blemishes from an image can be a burden as current blemish removal tools do not distinguish between different textures within an image. A user can take out a mark from an image, but if that mark crosses the boundary between two colors, those colors typically blend together and negatively impact image clarity.

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. 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.

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.  It has always been extremely important to keep detailed invention records in case you ever need to prove the particular date you invented. Notice the use of past tense in the previous sentence. On March 16, 2013, the United States moves to a first inventor to file system, which significantly changes U.S. patent law. For all intents and purposes inventors would do themselves well to assume that first inventor to file means file first!

That being said, there is a very limited grace period that is far more narrow than anything the U.S. has previously had. Inventors should not, in my opinion, rely on the grace period whatsoever — it is extraordinarily narrow. Nevertheless, it is conceivable that in some very limited circumstances it will be necessary to demonstrate that someone else derived your invention from you after you disclosed your invention. The only way to be able to hope to prove that will be with detailed records. Thus, record keeping should become more robust moving forward. You will not only need records that relate to how and when you arrived at the invention, but you will need records about how and when you disclosed your invention. Still, filing some kind of patent application as soon as possible will be the best move.

On Tuesday, February 12, the U.S. Patent & Trademark Office issued 27 patents to electronics manufacturer Apple Inc., including two design patents and a couple of patents related to improvements in wireless connectivity. Apple’s patent protections also extend into the data encryption world this week, as the hardware developer is awarded a patent for a new method of hash data security based on billiards.

Electronic Device
U.S. Patent No. D676019

This is one of two design patents issued this week to Apple Inc., this one protecting the design of an electronic device from Apple’s iPod Classic line. The Classic line of iPods is designed to offer the most capacity for media files, including video and music. Schematic images from multiple angles are attached to this patent document depict the recognizable center click wheel as well as other features, including a thin faceplate and the bottom docking port. Claim 1 of this patent protects: “The ornamental design for an electronic device, as shown and described.”

On January 25 2013, the United States Court of Appeals for the Federal Circuit (CAFC) issued its opinion in the case of Hall v. Bed Bath & Beyond, which was authored by Judge Newman who was joined by Judge Linn; Judge Lourie filed an opinion dissenting in part. The appeal arose from the United States District Court for the Southern District of New York. The CAFC ultimately reversed the district court’s dismissal of the plaintiff’s complaint counts for patent infringement, Lanham Act unfair competition, and New York unfair competition and misappropriation.

The patent in question — U.S. Design Patent No. D596,439  (the ’439 patent) — covers a Tote Towel which is essentially a large towel that has padding around the edges, and “zippered pockets at both ends, and an angled cloth loop in the middle.” Mr. Roger Hall (“Mr. Hall”) filed the patent application on November 17, 2008.

Mr. Hall contacted Bed Bath & Beyond (BB&B) in hopes of having them resell his Tote Towel in its stores nationwide. At the time of the meeting with BB&B, the patent application was pending and packaging on Mr. Hall’s Tote Towel reflected so. Instead of entering into a contractual relationship to resell the Tote Towel, BB&B which still had a prototype of Mr. Hall’s Tote Towel, decided to mass produce its own version manufactured in Pakistan.

On Wednesday, December 5, 2012, the House of Representatives passed two bills that are now await President Obama’s signature.  The bill — S. 3486— implements both the Patent Law Treaty (PLT) and the Hague Agreement Concerning the International Registration of Industrial Designs.  The U.S. Senate previously passed the same bill in the same form on September 22, 2012. Thus, the remaking of U.S. patent law and patent practice continues, and we will see more rulemaking coming from the United States Patent and Trademark Office.

S.3486 is the implementing legislation that modifies U.S. consistent with treaty obligations. The Senate ratified both the PLT and Hague Agreement in 2007.

With respect to the Hague Agreement,  it will now be possible to file a single application in English at the USPTO and have that application be the basis for design protection in each country that has similarly adopted the treaty.

On December 2, 2011 the district court in the Apple v. Samsung patent litigation issued a 65 page ruling [ii] denying Apple’s motion to preliminarily enjoin the U.S. sales of several Samsung products, [iii] based upon such products’ alleged infringement of three design patents [iv] and one utility patent, [v] owned by Apple.

In this ruling, the district court:

(1) recognized that “certain aspects of the design patent that are dictated by function” may limit the scope of such patent; [vi]

(2) listed elements contained in Apple’s design patents that are “dictated by function;” [vii]

(3) explained that it should “consider only the remaining aspects of the design in the infringement and anticipation analysis of the design patent” [viii] (citing Richardson v. Stanley Works, Inc. [ix] and OddzOn Prods., Inc. v. Just Toys, Inc. [x]);

(4) identified functional features in Apple’s design patents; [xi] and

(5) performed an infringement analysis of these design patents “in light of” its claim construction. [xii]

The above described claim construction and infringement analysis appear balanced and consistent with Federal Circuit authority cited by the district court.

The 50^th session of Assemblies of WIPO member states reached a breakthrough decision on how to complete negotiations on a pact to improve access to copyrighted works for the many visually impaired or print disabled people around the world.

Member states also agreed a work program for the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) for 2013. The IGC will continue intensive negotiations to ensure effective protection of genetic resources (GRs), traditional knowledge (TK) and traditional cultural expressions/expressions of folklore (TCEs).

In another significant decision, WIPO’s 185 member states agreed to expedite work towards a design law treaty to develop simplified standards for industrial design registration procedures.

The WIPO Assemblies, which met from October 1-9, 2012, took stock of the Organization’s substantive work over the last year, and provided direction for the future work program. At the closing of the Assemblies, WIPO Director General Francis Gurry welcomed the “extremely constructive engagement of member states” in the work of the Organization as demonstrated in the decisions taken by the Assemblies. He underlined the progress made by member states in setting timetables for concluding negotiations on international instruments on access to copyrighted work by the visually impaired, design law and intellectual property and genetic resources, traditional knowledge and folklore.

High stakes design patent cases are rare.  The recently tried Apple v. Samsung case[ii] is arguably the most important design patent case to be tried in a U.S. court, particularly if one defines importance in terms of monetary exposure.  Now that the smoke has initially cleared on the field of battle in the district court, commentators can critically scrutinize the results i.e. “shoot the survivors.”  The primary thesis of this paper is that no more than 6.4% of the $1.04B monetary award in the jury verdict[iii] can be enhanced for willful infringement, without being vacated and remanded on appeal.  The reason for this assertion is that slightly less than 6.4% of the total monetary award is for infringement of only utility patents.  Additionally, due to the lack of detail in the jury verdict regarding which Samsung products were used to commit willful infringement, it is quite possible that no enhancement of damages for willful infringement will survive an appeal.

The relative paucity of design patent jurisprudence regarding the legal remedy of damages and the equitable remedy of an accounting for the infringer’s profits, makes clear that while an award of damages for patent infringement may be enhanced under 35 U.S.C. §  284 for willful infringement, an award of profits under 35 U.S.C. §  289, may not be enhanced under Section 284.[iv]  While this distinction may appear important to one who wishes to obtain an enhancement of the damages award for willful infringement, the jury verdict form in Apple v. Samsung leaves one clueless as to whether the monetary award for infringement of 18 Samsung devices was an award of damages, an award of profits, or some combination of the two.

On August 2, 2012, U.S. Senators Patrick Leahy (D-Vt.) and Chuck Grassley(R-Iowa), in a rare non-partisan effort, introduced legislation to finally implement two patent law treaties that are so old that they were signed by President Bill Clinton in the 1990s.  The short title of the bill is he Patent Law Treaties Implementation Act of 2012.

Upon introducing the bill, Leahy said it would “help American businesses expand into foreign markets by reducing obstacles for obtaining patent protection overseas.”

One of these two treaties, the Hague Agreement Concerning International Registration of Industrial Designs, would for the first time permit for design patent applicants a benefit that utility patent applicants have had for decades — the ability to file a single, standardized, English-language application at the U.S. Patent & Trademark Office to obtain IP rights in multiple countries through the Patent Cooperation Treaty. By permitting design patent applicants to file in this manner, the Hague bill should greatly reduce the cost to U.S. applicants of obtaining foreign design rights.

The U.S. House Judiciary Subcommittee on Intellectual Property, Competition, and the Internet held a hearing August 1, 2012, on H.R. 3889, the “Promoting Automotive Repair, Trade, and Sales Act” or PARTS Act, legislation introduced by Representatives Darrell Issa (R-Calif.) and Zoe Lofgren (D-Calif.). During the hearing, subcommittee members listened to testimony from Rockingham Group President and CEO W. Neal Menefee and Consumer Federation of America Public Affairs Director Jack Gillis, who emphasized the benefits of the PARTS Act to consumers and stressed the balance it strikes. And if you believe that I have a bridge to sell you!

Rockingham Group of insurance companies is a member of the National Association of Mutual Insurance Companies and the Property Casualty Insurers Association of America, both of which are members of the Quality Parts Coalition (QPC), which is another industry group with what appears to be a horribly misleading name.   The QPC has stated its goal as being none other than securing a permanent legislative change to U.S. design patent law to (in their words) “protect the consumer’s rights to lower-cost alternative replacement parts.”  In other words, they don’t like design patents and would rather see them go away.

All too often inventors and entrepreneurs spend so much time creating that they have their head down, plowing forward, focusing only on the day to day operations associated with inventing and growing a business. Almost without fail, inventors know very well what they have invented and what they plan to do, but they have a terrible sense of what their invention could be. Just the other day I had a conversation with an inventor who thought we might not be understanding his invention because the first draft of the patent application seemed to miss the simplicity of his invention. Our job as patent attorneys is to not only try and protect the invention presented, but to work with the inventor to figure out the full glory of what the invention could be and what it could evolve into.

A patent application should certainly protect what the inventor is doing and what they want to do, but remember that in order to get a patent you do not have to produce a working prototype. You just need to be able to explain the invention with sufficient detail so that others skilled in the relevant technology area could both make and use the invention themselves without having to engage in undue experimentation. What is “undue experimentation” is a topic for another day, but suffice it to say that invariably what the “invention” is from a patent perspective is much broader than what an inventor thinks they have, and that is one critical reason (among many) why if you can afford to hire a patent attorney or patent agent you are always going to be better served by doing so and will wind up with much broader protection than doing it yourself.

Once upon a time one of the ways you could spot the scams from the legitimate operators in the patent industry was to look at who was directing clients to get design patents. Design patents have always been easy to obtain, indeed far easier to obtain than a utility patent. Of course, as with many things in life and with virtually everything in the realm of intellectual property law, the easier something is to obtain the less rights that are conveyed. You can obtain a copyright for under $50 if you do it yourself and you get tremendously long protection in terms of years – generations really – but the rights are exceptionally weak. This tried and true set of rules has been turned on its head to at least some extent with respect to design patents and not nearly enough inventors are seeking design protection.

A protectable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Distinguish if you will a an ordinary steak knife from a butcher’s knife.  In any knife there will typically be a handle and cutting blade.  A design patent would not protect the mechanical structure, but rather will protect the appearance.  In this regard it is possible for many different knives to receive design protection even though the basic handle and blade configuration is well known.  The question for patentability is whether the presentation or appearance of the functional item is unique.