Tag: Design Patents

New and Upcoming Changes in U.S. Patent & Trademark Law for 2025

Post author By Austen Zuege

Important Developments

As 2025 begins, some recent and upcoming changes in patent and trademark practice before the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention, along with developments from U.S. courts pertaining to those areas of intellectual property (IP) law. (Click the preceding links to jump to desired content).

Patents

Massive official patent fee increases for 2025

The USPTO will impose significant official patent fee increases starting January 19, 2025. Materials related to the patent fee increases can be found here, including an Executive Summary of the most notable official patent fee increases and wholly new official fees plus a spreadsheet showing all old and new fees and the difference between them. The Executive Summary and spreadsheet should be consulted because of the sweeping extent of the official fee schedule changes and because many initial proposals were modified or eliminated in the final rule.

[EDIT: The USPTO spreadsheet detailing the new official fee schedule confusingly listed extension of time fees as both having no increases and as having 7-8% increases for non-provisional applications. The text of the final rule suggested that these fees would increase, without specifying what those increases would be. It is believed that patent extension of time fees are increasing for non-provisional applications.]

The general nature of this round of fee setting activity is that the USPTO is charging much more and, in some areas, also doing less. As just a few selected examples, the USPTO is imposing new tiered fees for continuing applications (with large fees required if a new continuing application is filed more than six or nine years after the earliest priority date), new fees if the number of cumulative citations submitted with information disclosure statements (IDSs) exceed tiered thresholds of 50/100/200 references, higher excess claim fees, a huge increase in the fee for patent term extension (PTE) requests (which are not to be confused with patent term adjustment (PTA) determinations), and large increases in design patent application fees. Legislation a few years ago increased official fee discounts to small and micro entities, and the new official fees are in large part an effort by the USPTO to avoid any overall reductions in total fees collected.

AFCP 2.0 discontinued

The widely-used After-Final Consideration Pilot (AFCP) 2.0 program was discontinued as of December 15, 2024. The USPTO had previously proposed imposing a significant official fee for what previously carried no official fee. Feedback on the proposed fee requirement indicated that applicants did not believe the program provides enough benefit to justify the proposed cost. In response, the USPTO decided to eliminate the AFCP program entirely.

Applicants should understand that examiners spend very little time reviewing after-final responses and amendments, perhaps as little as 30 minutes, with a request for continued examination (RCE) and payment of the associated fee being needed in order for submissions to receive further consideration by the examiner. Applicants seeking to avoid RCE fees should also carefully consider how they respond to a first non-final office action on the merits, knowing that subsequent amendments and arguments after a final office action may receive only cursory consideration and may not be entered. Making claim amendments earlier can reduce the potential need for an RCE, if cost containment is more important than aggressive maximization of claim scope.

Assignment recordation developments

Legacy USPTO platforms for patent and trademark assignment recordation were replaced with a new unified platform called Assignment Center on February 5, 2024. There was no beta testing of this new platform prior to its launch.

While the new Assignment Center platform offers a graphical user interface with a modernized appearance, it eliminated certain features and provides reduced user functionality compared to the old systems. Submissions now require that the user login first. Most significantly, the ability to save draft submissions shared between different users was eliminated, making it more difficult for attorneys and support staff to meaningfully work together on assignment recordations. USPTO representatives have informally commented that there are plans to (re)introduce such collaboration functionality, but there have been no formal announcements about when (if ever) that functionality will be reintroduced. Also, the new platform no longer permits a patent assignment recordation submission to simultaneously serve as an inventor oath/declaration submission too (a separate oath/declaration submission in Patent Center is required).

Although the USPTO had recently proposed re-instituting a fee for electronic assignment recordations, that proposal was not implemented. Electronic assignment recordations will continue to carry no official fee, for the time being. Hard copy assignment recordations, submitted by mail, will continue to require an official fee.

Also, it was revealed in August of 2024 that the configuration of the USPTO’s Patent Center system led to the (potential) release of limited amounts of confidential information about unpublished patent applications between 2017 and 2024. This information was linked to recorded assignment data submitted through other assignment platforms, via an “Assignments” menu option in Patent Center listings for individual matters (which is now disabled unless applicants request that it be enabled). The information that was publicly accessible included the title of the application, application serial number, application owner name, application filing date, and name(s) of the inventor(s). Unauthorized viewing of confidential application information is not believed to be widespread, and substantive contents of unpublished applications was not made available. The limited nature of the information made public does not appear to pose significant concerns for most applicants. But this represents yet another problem added to a long list of debacles with USPTO online systems.

More types of e-signatures now accepted

Beginning March 22, 2024, the USPTO began accepting more types of electronic signatures on documents subject to USPTO signature rules. It is now possible to use a suitable document-signing software tool (DocuSign®, etc.) if two requirements are met: (i) the software tool must be specifically designed to generate an electronic signature and preserve signature data for later inspection in the form of a digital certificate, token, or audit trail; and (ii) the software tool must result in the signature page or electronic submission form bearing an indication that the page or form was generated or electronically signed using document-signing software. If those requirements are met, it is not necessary for this type of electronic signature to include slashes (as were previously required). Common commercial e-signature tools using will be able to satisfy these requirements, and typically will do so automatically under normal usage and settings. All of the previous types of electronic signatures accepted by the USPTO can continue to be used.

However, it is important to note that USPTO e-signature rules apply only to powers of attorney (POAs), inventor oaths/declarations, and other correspondence. USPTO signature rules do not control for assignments, for which applicable (local state/foreign) contract law will generally apply instead.

More information about electronic signatures in relation to U.S. patent matters can be found here.

AI-assisted inventorship

Guidance about inventorship when AI tools are utilized was issued by the USPTO in early 2024. In brief, the USPTO has so far taken the position that only humans can be inventors for patenting purposes. The issued guidance focuses on how to evaluate the use of AI to assist a human inventor, and the sufficiency of human contributions. A human must make a “significant contribution” to be an inventor, according to the USPTO. It is important to proactively consider the potential that AI was used in conceiving new inventions, so that inventorship can be determined and named properly. This remains an evolving area and the USPTO may possibly alter or elaborate its positions about AI-related issues at some time in the future.

Guidance regarding means-plus-function claiming

In March of 2024, a memorandum was issued to USPTO examiners providing guidance about interpreting means-plus-function limitations in patent application claims. That memo was intended to encourage examiners to identify means-plus-function limitations, to make relevant interpretations explicit in the prosecution history, and to ensure that such limitations have adequate support. U.S. patent law generally requires peripheral claiming, and prohibits central claims except under the limited exception of means-plus-function (or step-plus-function) limitations in a claim for a combination.

Means-plus-function recitations are often considered narrow, in contrast to treatment of “means” language in various other countries. Applicants and their counsel often seek to essentially obtain central claims without being limited to narrow means-plus-function interpretations, by using nonce words and functional terminology—like “[function] unit,” “[function] module,” “[function] system,” “[function] mechanism,” “[function] element,” “[function] member,” and the like. The main issue is whether a person of ordinary skill in the art would understand the term to refer to structure or instead merely be a generic placeholder for all possible ways of achieving the stated function (or functional result), with the latter approach raising concerns about impermissible central or preemptive claiming. The Federal Circuit has held that claim recitations that do not use the phrase “means for” may be interpreted as means-plus-function limitations in some circumstances. This approach tends to save applicants and patentees from themselves, because the alternative, as suggested by Supreme Court precedent and explained in detail in USPTO administrative decisions, is that purely functional claim limitations at the point of novelty that fail to use the phrase “means for” are invalid. Although a means-plus-function interpretation may still lead to indefiniteness concerns, if the accompanying description and figures fail to adequately disclose corresponding structure—such as by merely repeating the same functional language or conclusory statement of results without further explanation of the particular structure(s) used to achieve the stated function or result.

U.S. examiners have begun making means-plus-function interpretations more explicit more often in recent years, but they still fail to do so in all instances. More information about functional language in claims, disclosure requirements for means-plus-function claiming, and best practices are available here, here, and here.

New revision of MPEP released

The Manual of Patent Examining Procedure (MPEP) was updated in November 2024 to the 9th Edition, Rev. 01.2024. This revision is meant to be up-to-date with respect to USPTO policies and procedures as of January 31, 2024. A summary of changes can be found here, although this summary is very general and somewhat vague about specific changes.

Patent term adjustment calculation errors

In yet another instance of the USPTO incorrectly calculating patent term adjustment (PTA), it was announced that patents issued from March 19, 2024 through July 30, 2024 were subject to a software “coding error” that resulted in incorrect PTA numbers appearing on approximately 1% of granted patents from that time period. However, it is left to individual patentees to investigate PTA calculations and make a timely request for recalculation. People often express surprise that the term of a U.S. patent cannot be stated simply. Instead, determining patent term requires that members of the public (and the patentee) investigate numerous factors, including possible PTA, patent term extension (PTE), and terminal disclaimer term reductions, and then perform a calculation. Patentees must undertake their own analysis of USPTO PTA calculations, and if errors are discovered must request correction within certain time periods (two months extendable up to seven months from grant). Official fees are being waived for timely requests to correct USPTO errors due to this particular software error. But other petitions for PTA correction carry an official fee that is not refunded even if the PTA was incorrect due to some other USPTO calculation error.

Terminal disclaimer rulemaking abandoned

The USPTO has withdrawn proposed changes to terminal disclaimer requirements. The proposal would have more sharply limited patentee rights when a terminal disclaimer is filed to overcome a double patenting rejection. The proposal was met with significant opposition, including criticism that the USPTO lacked authority to impose the proposed rules. While the USPTO meant well by trying to address overreach and greediness by patentees who burden the public with large patent family “thickets” that are (by design) expensive to avoid or challenge, the proposal did seem to exceed USPTO authority and contradict statutory provisions. For now, the USPTO has left existing terminal disclaimer requirements and procedures as-is.

DOCX filing developments

The deeply unpopular official surcharge for U.S. non-provisional utility patent applications submitted in a non-DOCX file format has been in effect since January 2024. Since that requirement went into effect, the USPTO has belatedly clarified some policies and had modified how its electronic filing system Patent Center handles DOCX files, sometimes with formal announcements and sometimes without any clear notice. Practitioners and applicants have had to struggle to understand unclear and shifting treatment by the USPTO, making it difficult to provide clear guidance for how to avoid the official surcharge. There have been numerous instances of surprise official charges by the USPTO.

One belated clarification was that applications filed in a language other than English (with a simultaneous or later-filed English translation) must be in DOCX format to avoid the surcharge. Patent Center’s handling of DOCX files in other languages, using fonts and characters that may not be supported, presents challenges and risks to applicants. This requirement, which was first announced by the USPTO only in a Frequently Asked Questions (FAQ) response after the non-DOCX surcharge went into effect but not in any official rulemaking notice, provides no substantive benefits to the USPTO or to applicants, except that it provides another opportunity for the USPTO to impose official surcharges.

Also, the USPTO began imposing the non-DOCX surcharge (without warning or notice, and contrary to certain prior indications) when preliminary amendments are filed together with a new application in a non-DOCX format. This surprised many practitioners, because the USPTO had previously been recommending against submitting amendments in DOCX format. And it was not until November 13, 2024 that Patent Center was modified to permit a DOCX format preliminary amendment to be filed together with a DOCX application in a single submission (before then practitioners had to make separate submissions on the same day, which was cumbersome). The USPTO has still not clarified how substitute specifications should be submitted with preliminary amendments to avoid non-DOCX surcharges, meaning such submissions remain highly cumbersome and their treatment unclear unless the surcharge is paid.

Additionally, without any clear announcement, the functionality of Patent Center was changed sometime in 2024 so that tracked changes redlines in DOCX format amendments are now converted to strikethrough and underlining formatting during submission, instead of being “entered” and the mark-ups no longer being explicitly visible as Patent Center initially handled such formatting. This underscores how the operation of the USPTO’s Patent Center platform for the processing and rendering of DOCX-format files may suddenly be different than expected on any given day, without advance warning.

USPTO procedures for handling of DOCX format files continues to change over time. Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. But applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.

Revision to USPTO authority to impose fines

In 2022, a law was passed giving the USPTO authority to impose fines of up to three times the amount of official fees an entity failed to pay for “falsely” asserting small entity status or “falsely” certifying micro entity status. (codified in 35 U.S.C. §§ 41(j) and 123(f)). There is no time limit in the statute for imposition of such fines, nor any upper limit on the amount of those fines. Since then, the USPTO has not created any rules to implement its fining authority. For instance, the USPTO has not established any schedule of rates for such fines, nor any formal procedures for how determinations of false assertions/certifications are to be made. A worrying aspect of the original law was that it provided no exceptions for honest mistakes. So it appeared that even a clerical error or honest misunderstanding could lead to potentially large (even unlimited) fines. A December 2024 revision to those laws now adds exceptions to allow an entity to show that an assertion or certification was made in good faith to avoid a USPTO fine. This exception therefore limits USPTO fining authority to situations where a fine is justified as a penalty for bad faith action. However, the law as revised still places no upper limit on the amount of these fines.

Riyadh design law treaty signed

The diplomatic conference in Riyadh, Saudia Arabia in November 2024 concluded with the adoption of a design law treaty. The impact of this treaty on the United States remains to be seen. It will be some time before the treaty as negotiated is actually implemented anywhere. It is unclear if any significant changes to U.S. design practice will result form this treaty. Although the treaty may bring some other jurisdictions into further harmonization. But the treaty appears to stop well short of complete international harmonization of the treatment of designs. For instance, the U.S. will continue addressing designs as a type of patent right but other countries will continue treating design registrations as something other than a patent right.

Vidal steps down as director of USPTO

Kathi Vidal stepped down as Under Secretary of Commerce for Intellectual Property and Director of the USPTO as of December 13, 2024. Derrick Brent, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO has become acting Director until a new Trump administration appointee is confirmed.

New collective bargaining agreement

The USPTO and the Patent Office Professional Association (POPA) signed a new collective bargaining agreement (CBA) on December 11, 2024, an agreement that was last formally updated in 1986. The USPTO announced that the agreement had been signed, without making it available on the USPTO web site. POPA, however, has made the agreement available on its web site. There are many interesting documents available from POPA that provide insight into the patent examination process. For instance, POPA provides information about the “count” system that governs examiner work quotas.

More U.S. patent filing information

Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim. Additional basic information about patenting can be found in the Patent Basics guide.

Trademarks

New trademark fee structure and fee increases for 2025

The USPTO will impose official trademark fee increases and a new structure for trademark fees starting January 18, 2025. Materials related to the new trademark fees can be found here, including an Executive Summary of the most notable official trademark fee increases and new structure for trademark fees plus a spreadsheet showing all old and new fees and the difference between them.

As part of the new trademark fee rule, the naming convention and types of fees are changing. For example, a typical trademark application would see at least a $100 fee increase. And, if custom identifications of goods/services are used rather than merely selecting ones from pre-approved descriptions from the Trademark ID Manual, then new “premium” surcharges of $200 per class would apply. This means that typical new trademark applications will see official filing fees increase by $300, and possibly more. Due to an inability to change the fee structure to impose new surcharges in Madrid Protocol extensions to the USA, the existing Madrid Protocol (§ 66) fee structure will remain but with those fees increasing by 20%.

Various other fees are being created or increased. For instance, a new $100 fee (per class) for “insufficient information” has been created, covering any deficiencies (or mistakes) in satisfying the first nineteen requirements of 37 C.F.R. § 2.22(a) (that is, all listed requirements except for a foreign applicant’s failure to designate a U.S. attorney). Those fees will include things like failure to include a translation or transliteration, failing to provide complete information about the applicant, failing to provide a description of a mark with graphical design elements or stylization, failure to include a statement about use of color, or a failure to claim ownership of prior registrations. Also, there is a new surcharge of $200 (per class) for each additional group of 1,000 characters beyond the first 1,000 characters. Some fees specific to intent-to-use (ITU) applications will increase by 25% or 50%, and post-registration maintenance/renewal fees will increase from 5-44%. Petition fees will generally increase by 60% or more, and there will be a 400% increase in the official fee for a letter of protest. However, extension of time fees in trademark matters have remained unchanged, without any increases.

Targeted trademark audits

USPTO audits of trademark registrations had been conducted on a random basis since 2017 during the post-registration maintenance process. However, given the rise of so-called “specimen farm” websites used to generate fake or fraudulent specimens of use in addition to the prevalence of digitally altered /or fraudulent specimens, the USPTO expanded its audit program to further include targeted or ”directed” audits starting October 28, 2024. The expanded audits are meant to address “systemic efforts to subvert the requirements for use in commerce of a mark to support registration.”

Once initiated, these directed audits will happen in the same manner as with random audits. The USPTO has said only that directed audits can take place when submitted documents “exhibit certain attributes that call into question whether a mark is in use in commerce in the ordinary course of trade.” But apart from vague references to altered specimens and specimen farms, the USPTO has not disclosed what “certain attributes” will trigger a directed audit, making this process essentially discretionary. On the one hand, the USPTO desires to keep its discretionary directed audit procedures secret, so that entities responsible for fraudulent submissions cannot seek to avoid detection and exposure. But, on the other hand, unlimited discretion raises due process and fairness concerns, including the possibility of scapegoating.

New trademark filing systems

In addition to having recently replaced the legacy trademark search platform and the trademark assignment filing platform, the USPTO will retire its Trademark Electronic Application System (TEAS) platform used for new application and prosecution filings on January 18, 2025. A new Trademark Center platform, currently in Beta release, will take the place of TEAS.

Additionally, the Trademark Trial and Appeal Board (TTAB) will retire its legacy Electronic System for Trademark Trials and Appeals (ESTTA) filing system sometime in the spring of 2025. A new TTAB Center platform, currently in beta release, will replace ESTTA.

New revision of TMEP released

The Trademark Manual of Examining Procedure (TMEP) was updated in November 2024. This update incorporates relevant precedential decisions issued since the prior May revision and before August 31, 2024. It also revises language to make the TMEP gender neutral and replaces references to the Trademark Electronic Application System (TEAS) and the Electronic System for Trademark Trials and Appeals (ESTTA) with generic wording, because they will be retired shortly and replaced with Trademark Center and TTAB Center, respectively. A complete change log can be found here.

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications. Additional basic information about trademarks can be found in the Trademark Basics guide.

Significant Developments in U.S. Courts

Obviousness for design patents

U.S. design patent practice has seen a number of significant shifts and important court decisions in recent years. In the case LKQ Corp v. GM Global Tech. Operations LLC, the obviousness standard applied to design patents was clarified as being the same as that applied to utility patents. A different standard (called the Rosen-Durling framework) that had previously made it incredibly difficult to ever find a design obvious was finally overruled. But it has been emphasized that analogous arts requirements still apply to references cited for obviousness. However, what the analogous art requirements will or might mean specifically in the design context remains to be seen.

Following the LKQ decision, the USPTO issued some limited guidance to examiners. But that guidance leaves many open questions and it stopped well short of making the sorts of significant changes to design application examination for obviousness that LKQ suggests. It may take a many years before enough design patent obviousness questions reach courts before the true impact of the LKQ case will be clear.

Third-party litigation funding

The funding of court litigation by a third party has received much attention, particularly in relation to the relationship between such funding arrangements and so-called “patent troll” litigation. While litigation funding can help promote access to justice, on the other hand it can skew litigation towards frivolous claims that revolve more around actual or threatened litigation costs than the true merits of the case, and funders may end up capturing so much of the benefit that the inventor or patentee is exploited in ways the eviscerate any purported access to justice benefits. Third-party function of civil lawsuits involving IP assertion have a particularly high risk of using the high cost of a legal defense as a cudgel to seek a nuisance-value settlement.

In terms of new developments and investigations into this issue, there was a recent Government Accountability Office (GAO) report, and the Department of Justice (DOJ), U.S. Judicial Conference’s Advisory Committee on Civil Rules, and congress / the legislature are all investigating or contemplating action on the issue. However, some recent interest in this topic is sadly colored by politicized xenophobic and imperialist machinations rather than being purely about justice and fairness. Current activities have primarily focused around third-party funding disclosure requirements in civil litigation, like Chief Judge Connolly’s standing order for disclosure of funding arrangements for cases before him in the District of Delaware.

Crisis of legitimacy in judiciary continues

The legitimacy of U.S. courts remains low in the eyes of the general public, to the point that public confidence in the courts has been described as “withering”. The U.S. Supreme Court has engaged in blatantly partisan realpolitik activism of late. This comes on top of recent investigative reports by journalists and a U.S. Senate Committee on the Judiciary report on ethics challenges at the Supreme Court, which document ongoing and rampant ethics problems and what looks like bribery and influence peddling. And, specifically in the IP field, Judge Pauline Newman remains suspended from the Federal Circuit, the court with exclusive appellate jurisdiction over patent lawsuits, due to her ongoing refusal to cooperate with an investigation into her fitness due to health issues and her treatment of court staff. Judge Newman’s conduct has reflected poorly on her, although it also has a partisan character in relation to the presidential judicial appointment system that will determine who will replace her if she finally steps down from the bench.

Additionally, the Judicial Conference of the United States issued non-binding guidance in March 2024 promoting the random assignment of cases to deter “judge-shopping”. The Administrative Office of the U.S. Courts was considering a binding rule for random case assignment, but that possibility was later apparently abandoned. The issue of judge-shopping typically involves judicial districts with single-judge divisions, which create the possibility that cases dealing with issues of importance to the entire nation can be filed there knowing that they will be assigned to a judge with a favorable ideology and political persuasion. This is much like forum-shopping but is judge-specific and therefore even more potent. This tends to allow parties to leverage the attitudes of a few individual federal judges, which may be extremist minority views that are deeply unpopular, to try to reshape the laws and their interpretation across large regions or even the entire country. This is most often the case when politically reactionary positions hostile to civil rights or public benefits are laundered through courts in the U.S. south. But in the IP field this also has happened in Texas where certain judges have taken positions favorable to “patent trolls.” There is a profoundly undemocratic character to how this process unfolds. The very fact that random case assignment is being opposed is an embarrassment and a sign of the dysfunctional nature of the U.S. government these days, which shows signs of becoming worse rather than better in the near future.

PTAB procedural rules

Lastly, multiple new rules were implemented for Patent Trial & Appeal Board (PTAB) administrative court proceedings at the USPTO. The use of rulemaking, rather than less formal guidance and procedural mechanisms, was generally intended to provide more stability to PTAB proceedings despite changes in USPTO leadership. However, the practice of discretionary denials of PTAB trials and director review are still nothing more than tinkering at the edges of a system that remains plagued by political whims, an issue that has been with the USPTO since it was founded.

December 2024

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Contact Austen

Tags Design Patents, Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Articles

Analogous Art for Design Patents

Post author By Austen Zuege

By Austen Zuege

The Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC that substantially altered the obviousness analysis for design patents. The so-called Rosen–Durling framework was overruled (largely sidestepping the question of its abrogation by KSR). The patentability of ornamental designs of useful articles will now be under the same Graham v. John Deere obviousness standard that applies to utility patents. The LKQ decision emphasized that analogous arts requirements still apply to references cited for obviousness. But what will (or might) the analogous art requirements mean specifically in the design context? The following discussion explores some possibilities in a rough initial take on what might follow in the wake of LKQ.

Analogous and Non-Analogous Art: Two Tests or Prongs

In order to be used as a prior reference to try to establish obviousness, a given reference must be “analogous art”. There are two tests or prongs used to assess whether or not a given reference is analogous art (at least for utility patents). A reference is analogous art if: (a) it is from the same field of endeavor as the claimed invention (even if it addresses a different problem), or (b) if it is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). To be analogous, a given reference must satisfy only one of these two tests/prongs. Although the evidence and analysis may overlap, so some prior art might satisfy both tests.

The analogous arts framework has been around for a long time with respect to obviousness analyses for utility patents. Courts have generally taken a broad and expansive view of what constitutes analogous arts, especially in light of KSR. But it remains in place as a check against hindsight bias by establishing requirements for the factual foundation needed in order to rely on a given prior art reference for an obviousness argument. In that sense, it is about assessing whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date).

Analogous Art Analysis for Designs: Some Initial Thoughts

Although the LKQ decision paints its holding as something of a modification of the Rosen-Durling framework, that seems to be mainly a diplomatic attempt to counter the “chicken little” arguments that a disastrously chaotic free-for-all would ensue if design patents were held to the same standards as utility patents under KSR. Application of the non-analogous arts standard to designs going forward will likely not be merely a continuation of business-as-usual. LKQ represents a major shift in the patentability analysis for design patents. As a result, design patent prosecution will likely move further away from a quasi-registration process (a prospect that Robert Post once described as “intoxicating” applicants and their agents), with design examination extended beyond rejections for mere procedure and formality defects towards more substantive concerns. Obviousness rejections based on combinations of prior art references—long a ubiquitous feature of utility patent examination—should become more common. And similar effects should be seen in litigation and Patent Trial and Appeal Board (PTAB) challenges.

Yet the LKQ decision is hardly definitive about what will come next. For utility patents, the non-analogous arts test is rarely invoked and courts have generally taken a broad view of analogous art. But there are few if any prior cases applying analogous arts requirements to designs. That means there are many open questions and practical considerations about how it should be approached for designs. Let us turn to the two prongs/tests with those things in mind.

Analyzing the Same Field of Endeavor for Designs

The LKQ decision reaffirmed a statement from an old case that “[t]he scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” Even though design patents are short, all design patents have to specify an article of manufacture. Indeed, U.S. Patent & Trademark Office regulations specify that “[t]he title of the design must designate the particular article.” (37 C.F.R. § 1.153(a)). So an applicant cannot obtain a design patent without specifying a particular article in the title, even if no further textual description is required.

What is notable here is that LKQ quotes a prior case that encompasses not only the same article of manufacture, but also “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” This matters in view of a string of rather questionable Federal Circuit cases that took narrow views that only prior art for the same article of manufacture qualifies as prior art for validity analysis or for three-way infringement comparisons. I call these cases questionable in part because they contradict earlier precedent, but also because their conclusions are poorly explained or highly tendentious. So, a key takeaway is that in an en banc decision the Federal circuit has ruled that the analogous arts same field of endeavor prong/test must extend beyond the same article. This has the effect of neutralizing the impact of In re SurgiSil on the obviousness question (without yet resolving the conflict between SurgiSil and older precedent for anticipation).

As one example, LKQ may permit some generalizing of the article for the field of endeavor prong/test. This can be thought of as saying that the field of endeavor may be a genus of which the claimed invention is a species. For instance, if a particular design patent is for a plow of the sort used with a tractor in a farm or garden, the field of endeavor might be considered to be farm or tractor implements rather than only plows. That might mean that other implements like harrows used with tractors are analogous art. This could mean that a design that merely carries over the ornamental appearance of one farm implement to a different one is merely obvious, even though the implements serve different functions. Or, a prior art reference for a cat toy might be in the same or similar field of endeavor as a claimed dog toy. Different articles might also be similar, or part of the same genus, if they are known substitutes/alternatives.

But there might other ways to look at “similarity” for the field of endeavor prong/test for designs. Take an example of different articles sold together as a set or kit. There might be, for instance, a cutting board plus a large wooden fork and spoon that are sold together as a set, with common ornamentation on each item. This might be common surface ornamentation and/or a similar shape/configuration of handles of each item. Even though cutting boards and forks/spoons are different articles with different characteristics and uses, their sale together as a set may support a conclusion that they fall within similar fields of endeavor. Or there may be different articles advertised together as part of a product line with similar ornamentation, even if the articles are only sold separately. Such approaches to field of endeavor similarity are not entirely unlike the evaluation of the relatedness of different goods/services in trademark cases by looking at proffered evidence that they commonly emanate from a single source under a single brand.

Analyzing What is Reasonably Pertinent to the Problem Faced for Designs

LKQ recognized that a design patent itself does not clearly or reliably indicate the particular problem with which the inventor is involved. The decision further stated that it does not foreclose that art from outside the same field of endeavor could also be analogous. Apart from stating that this is a fact question to be addressed on a case-by-case basis, the court explicitly left this an open question. It will therefore be up to future cases to further develop the application of this standard. It will be interesting to see how this open question will eventually be resolved. What follows are some initial thoughts and suggestions, which draw from insight from social sciences.

Before going further, though, let me say that it is fair to wonder what problem-solving means for non-functional ornamental designs. This opens a rather large can of worms that is the question of whether industrial designs regarding ornamental appearance really involve “invention” at all. This is a big question because, in turn, it implicates the question of whether design patents, first made possible in the 1842 Patent Act following a proposal to have copyright protection for designs modeled on then-recent British law, are constitutional or not. Justice Douglas observed long ago that “attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent.” Does that apply to the very existence of design patents? Although these concerns should be borne in mind, broader questions of constitutionality are for another day. Let us turn to the much narrower question of what designing really involves in terms of solutions it purports to offer.

Setting aside design patent protection pursued for improper purposes (such as to try to preclude functional interoperability), most industrial designs are about marketability. This is a topic Thorstein Veblen wrote about in terms of how the relationship between workmanship and salesmanship was often wrongly blurred by treating the cultivation of saleable appearances as a necessary engineering production cost.

Under that rubric, it may be helpful to look at the ways that designers approach their work. Reference to storytelling and narrative are common. It is easy to find assertions that “[t]he story is the primary motivating event that leads to design and innovation.” Or that design is cultural and tells a story about things like place/geography. It is also said that product design can “tap into users’ emotions” by building on a motivating narrative. Indeed, industrial design training courses in “form fundamentals” even emphasize “How Great Storytelling Leads to Great Industrial Design.”

The way that marketing proposals are presented to clients is also informative. It is typical for advertising pitches to include statements about things like “color psychology” to justify choices of colors in terms that are emotive and feelings-based. For instance, “this is yellow as a symbol of kindness, warmth, and empathy.” Whether this is deployed in a way that is scientific or more akin to pseudo-sciences like phrenology or alchemy is worth consideration here. But the fact remains that visual presentations are presented in this manner in real-world scenarios. Whatever criticisms might be made against the bases for these theories, or their use in a given situation, they might well be what a designer of ordinary skill would consider when devising a new industrial design. The crux is the purported link between social meaning and visual appearance that is known or otherwise already available in the art. And reference to marketing, advertising, and branding rather than product design specifically is still fair, because Federal Circuit panels have held—for better or worse—that design patent and trademark standards are analogous and that blurring distinctions between them is harmless. And talk about storytelling and narratives is often framed as simultaneously being about both product design and branding so that users/customers “understand the value of the product and to build a deeper connection with the brand.”

There have been many efforts to analyze social significance of visual representations. A fascinating example is the television documentary mini-series and corresponding book “Ways of Seeing” by John Berger et al. This looked at artworks and assessed, through critical studies, how certain depictions and themes reinforced things like sexism and patriarchy. The analyses presented are open to criticism, particularly in terms of their underlying essentialism (in somewhat the same way patent as claim construction ruling that seem to simply decree that a given term means one particular thing without explanation). After all, Beethoven’s “Ode to Joy” in his 9th Symphony has been used to represent just about every possible worldview (even fascists used it!), which tends to refute essentialist notions that there is any particular meaning inherent to it. But, still, the “Ways of Seeing” series and book presents a very useful reference (easily accessible to any viewer or reader) that informs how reasonably pertinent problems might be assessed for design patent analogous art. That is, it may be possible to ask what sort of (non-technical/non-functional) social objective is sought to be promoted, and then look at ways that other designers have sought to express those non-visual concepts visually before with the same or different types of articles.

The essentialism of Berger et al.’s approach might be softened or avoided by looking more to something like Pierre Bourdieu’s sociology, which investigates meaning in terms of social fields. Bourdieu’s famous book La Distinction [Distinction: a Social Critique of the Judgement of Taste] is useful in exploring how artistic tastes reflect attempts to draw social distinctions. People’s tastes associate them with one group and distance them from others. To (over)simplify this, taste is less about inherent qualities of artistic works or isolated individual preferences than reflecting social distinctions arising from social factors that have meaning as part of a larger field in which individual instances cluster as nodes. For example, if someone says they “like all types of music except country” they are are probably trying to convey that they are not like the sorts of people who listen to country music. And “disco sucks” epithets were, historically, often effectively dog-whistle homophobic slurs. While Bourdieu’s more formal methods involving surveys will be impractical to routinely apply in patent litigation, a book like David Lee’s Battle of the Five Spot, about why jazz musician Ornette Coleman’s 1959 performances at a New York City club were musicologically significant, shows that the general framework can be applied without extensive surveys.

And this comes up in more seemingly utilitarian contexts as well. A 2021 segment on the long-running British television series Gardeners’ World by Advolly Richmond explored the origins of lawns. These came into being in the later middle ages in Europe on aristocratic estates. They required having many servants to mow them, and technology that made such work feasible. The subsequent expansion of lawns can be seen—though the lens of Thorstein Veblen’s seminal book The Theory of the Leisure Class: An Economic Study of Institutions—as people of lesser means attempting to emulate feudal aristocracy with the aid of improvements to lawn mower technology. That is, lawns were a symbol of aristocratic wealth and privilege and the appearance of a “well kept” lawn evolved into widespread use as a visual symbol meant to convey the owner’s wealth (i.e., ability to hire a servant or available free time to mow him- or herself with a purchased lawnmower device) and/or connection to aristocratic values.

Fads are also relevant here. Take computer presentation slide deck templates. Companies often have these and there are trends/fads that develop such that different templates used by different companies share common features at given times. For instance, one fad was to use blocky sans serif fonts and high-contrast color schemes incorporating bright, vivid colors. Suffice it to say, fads are social determinants that can provide motivations to those devising ornamental designs. And designing slide deck templates is not altogether that different from, say, designing the ornamental appearance of graphical user interfaces and computer-generated icons, which are the subject of design patents. How many companies have explicitly tried to have a minimalist computer search interface that looks “like Google’s”?

What does all this social science framework really tell us about problems faced for those developing industrial designs? Well, if some bit of evidence (more on that later) establishes an intent to modify an existing product design to be more aggressive and powerful looking, then looking to prior art with bigger, thicker, taller, etc. characteristics that create a more aggressive and powerful visual appearance would seem to be analogous in terms of the problem faced, even if pertaining to a different type of article or different field of endeavor.

In a more direct way, there can be situations in which designers reproduce known ornamentation of their own or co-workers. For instance, there might be an explicit intention or goal to “create a sense of continuity and coherence across a brand’s products and services.” Some ornamental feature or general style of ornamentation might simply be copied or ported over to another design project. In the design patent context, this sort of motivation is undoubtedly relevant to questions about the obviousness of re-using and adapting known ornamental aspects of one product to another, even when dealing with different types of products/articles.

The parties in LKQ disputed whether designs solve problems at all. Perhaps another way of looking at that (in a Veblenian way) is to say that most or all designs address the problem of saleability, which is not specific enough to any particular claimed design to be of use for the obviousness analysis. And the word “problem” might imply functional solutions rather than ornamental ones—although dictionaries merely define that word as a question to be considered. But, in this author’s view, the social science guidance discussed above still bears on having a second prong or test for analogous arts for design patents. Perhaps it is simply a matter of renaming the second prong/test, maybe as being about the realization of a type of (visual/social) impression sought rather than the “problem” faced. Here again, we run up against the issue (for another day) of whether ornamental designs are really “inventions” at all.

Evidentiary Considerations

Design patents are scant on text. Their prosecution histories might contain some relevant information about the field of endeavor and/or problem faced, but only on occasion or inferentially (for instance, in terms of what prior art was cited or not cited, or through amendments to the title). And, unique to design patent practice, an unpublished appendix of the original application might contain information relevant to what is analogous art, but not always. Family-related or commonly-assigned or -invented utility patent applications, if they exist, will also be a rich source of information, as they have been for functional vs. ornamental analysis in the past.

In the longer term, design patent applicants might choose to voluntarily insert some sort of problem statement in an application (possibly in the appendix), or the Patent Office might institute a new rule requiring such a statement. While patentees might balk at doing this, it may give the patentee some measure of input or control over the way analogous art analysis proceeds.

Notably, the LKQ decision cites approvingly Airbus S.A.S. v. Firepass Corp., a case that looked at the analogous art “reasonably pertinent” prong/test and said that extrinsic evidence can be considered to link the claimed invention and cited prior art (that fell in a different field of endeavor) by a common technical problem. Airbus relied on KSR to hold that overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Extrinsic evidence can thus be used to help define the problem faced. And extrinsic evidence will undoubtedly play an even larger role in addressing questions about analogous art status for design patents than with utility patents, particularly when defining the “problem faced” or a similar inquiry.

In litigation, discovery around a designer’s intentions and objectives may be useful. This might convey the problem faced. Advertising by the patentee might also be a fertile source of that kind of information. Do ads highlight a “sleek” look or “curved” lines of the patented product, for instance, like televised car commercials often do? Information about the work experience of a designer named on a design patent might also be relevant to the field of endeavor and scope of “similar” articles.

One difficulty, however, is trying to evaluate any link between a cited prior art design patent or printed publication reference and a common problem faced. If the reference is silent on its face about this, what sort of evidence will either link it to the challenged patented design or differentiate it? A conventional approach is expert testimony. Just in the way copyright litigation can involve expert testimony from musicologists, or the way utility patent litigation involves scientific or engineering expert testimony, there are opportunities to present testimony about links or differences. And, following Airbus, additional extrinsic evidence such as textbooks, printed publications, other patents, etc. might be relevant to link (or differentiate) a given prior art reference. Evidence about fads, trends, or brand/product product line coherence might fall in this category. Another possible approach, less conventional historically, is a survey of ordinary consumers. If we return to the example of making something look more aggressive and powerful, would a significant percentage of ordinary observers use those same words to describe a given prior art reference? Or would a survey somewhat similar to a trademark likelihood of confusion survey also potentially provide relevant evidence? Perhaps such a survey might focus on something other than, or rather more specific than, the overall impression, like aspects of the prior art that are a material part of the overall visual impression to the ordinary observer (and which are shared in common with the claimed design being challenged). Testimony from the designer or author of the cited prior art might be possible, if also potentially subject to attack.

May 2024

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Tags Design Patents, Litigation, Patent Prosecution

Articles

New and Upcoming Changes in U.S. Patent, Trademark, & Copyright Law for 2024

Post author By Austen Zuege

Important Developments

As 2024 begins, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters and at the U.S. Copyright Office for copyright matters merit attention, along with developments from U.S. courts pertaining to those areas of intellectual property (IP) law. (Click the preceding links to jump to desired content).

Patents

Non-DOCX filing format requirements postponed (yet again)

The deeply unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed yet again, until January 17, 2024. Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications. Furthermore, the USPTO has indefinitely extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many strong objections from U.S. patent practitioners and practitioner organizations.

It remains to be seen whether there will be further postponements or a larger change in USPTO policy about mandatory DOCX filings, which in general provides only a small clerical benefit to the USPTO while placing large burdens and costs on applicants.

Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. But applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.

Electronic patent “eGrants” now in place

On April 18, 2023, the USPTO began issuing an electronic PDF copies of patent “eGrants” as the official versions of granted patents. Continuing a long tradition, patent eGrants are issued on Tuesdays. As of December 2023, “ceremonial” paper copies were still being automatically sent as part of a transition period. The end date of that transition period, when paper copies will no longer be sent, has not been specified. Whenever the transition period does end, paper copies of patents can still be ordered from the USPTO for a small official fee (currently $25). However, ordered copies will either be a certified copy of the entire patent (which lacks the decorative color cover like eGrants and instead includes a certification cover page) or a “presentation” patent (which is a partial certified copy of only the front page of the patent, with a unique certification statement and special seal). Both of those differ from current “ceremonial” copies.

Of note, any color drawings in patents do appear in color in the new electronic patent eGrants. This potentially reduces the need to specially order color copies.

Further, the USPTO will also begin issuing certificates of correction electronically starting January 30, 2024. Paper hard copies of certificates of correction will not be mailed after that date, although they can still be specifically requested for a fee like other patent documents.

Massive official fee increases proposed, but implementation unclear

In April of 2023, the USPTO announced plans for significant official fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official patent fee increases proposed. If implemented, many fees would be increased by 25% and some by over 700%! And some wholly new fees are proposed. The Executive Summary should be consulted for more details because of the sweeping extent of the proposed fee schedule changes.

For example, the USPTO has proposed tiered fees for continuing applications (with large fees required if a continuing application is filed more than three or seven years after earliest parent’s filing date), new fees if the number of citations submitted with information disclosure statements (IDSs) exceed tiered thresholds, higher excess claim fees, more steeply increasing subsequent request for continued examination (RCE) fees, new fees for After-Final Consideration Pilot (AFCP) 2.0 requests, reinstating and increasing fees for assignment recordations submitted electronically, and enormous increases in design application fees. The design application fee increases are being driven by the prevalence of mostly foreign applicants filing expedited examination requests as micro entities, which has created a large backlog of non-expedited design applications.

While the USPTO currently has fee-setting authority “only to recover the aggregate estimated costs to the Office,” many of the proposals would appear to exceed that authority to try to shift or discourage certain actions by applicants.

At present, the USPTO has not made further announcements in response to comments about its patent fee proposals. Some changes to the initial proposals are certainly possible. But extremely large official patent fee increases are likely by January 2025. More official information should be available sometime in the first quarter of 2024.

Design patent 1 million issued and design patent bar created

In 2023 the USPTO issued design patent 1,000,000. Also, the USPTO authorized a design patent-specific bar for practitioners without scientific or engineering backgrounds to prosecute design cases. This new design patent bar does not restrict the ability of other patent practitioners to handle design applications. Regular patent practitioners with scientific or engineering backgrounds are still able to handle any and all types of patent applications, for utility, design, or plant matters. But practitioners admitted to the new design patent bar will not be able to handle utility or plant patent applications. Other developments in the courts related to design patent practice are discussed below.

Suggested figure for publication policy changed

Applicants were previously able to suggest a figure to appear on the front page of a pre-grant publication of a patent application, but the USPTO independently decided which figure to publish on the front page and sometimes chose a different one. That policy has changed. The USPTO now exclusively uses the drawing figure suggested by the applicant for the front page of the pre-grant publication when that suggestion is included on a compliant application data sheet (ADS) that is timely filed before the USPTO begins its process of publishing the application. Despite this change, it is still common (and often recommended) for applicants to allow the USPTO to select a figure for publication on the front page and not suggest one.

Changes to USPTO online systems

On November 15, 2023, the USPTO permanently retired its PAIR and EFS-Web systems. This leaves only the USPTO’s Patent Center for making electronic filings and retrieving file histories. Although the USPTO has said that Patent Center provides all the functionality of the retired systems, that is not accurate. For instance, without any formal announcement, the USPTO deactivated its First Office Action Estimator tool. In truth, that estimator tool had ceased to be accurate for some time. But applicants are now left with no mechanism to estimate the time until substantive examination begins. Patent Center has reduced functionality in numerous areas and practitioners have found it to be prone to bugs and usability problems, including a lack of capacity.

The USPTO has also announced a plan to “reform” the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system called the Intellectual Property Assignment System (IPAS). IPAS is slated to be available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024]. No further details are available at this time, so it is unclear how the new assignment system will differ or what the apparently integrated patent and trademark recordation interface will look like.

More U.S. patent filing information

Trademarks

Fee increases proposed

In May of 2023, the USPTO announced plans for official trademark fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official trademark fee increases proposed. If implemented, the naming convention and types of fees would change. For example, a typical trademark application would see at least a $100 fee increase. And, if custom identifications of goods/services are used rather than merely selecting ones from pre-approved descriptions from the Trademark ID Manual, then new “premium” surcharges of $200 per class would apply. This means that many (if not most) new trademark applications will see official filing fees increase by at least $300, and possibly more if there are multiple classes of goods/services. Somewhat similar fee structure changes and official fee increases would apply to Madrid Protocol extensions to the USA too. Various other fees will increase 10-66% or more, including a 400% increase in the fee for a letter of protest, for example.

At present, the USPTO has not made further announcements in response to comments about its trademark fee proposals. Some changes to the proposals might be made, but significant official increases are a certainty. More information should be available from the USPTO in the first quarter of 2024, and the new fees are expected to go into effect by November 2024.

New trademark search and assignment recordation tools

The USPTO retired its Trademark Electronic Search System (TESS) on November 20, 2023. A new Trademark Search tool has been made available in its place. The new tool has a more modern-looking interface. It still includes search functionality similar to that of TESS, but no longer times out during searches. Also, it offers the ability to export search results and other information as a spreadsheet. However, the USPTO has warned that the new Trademark Search system will sometimes display outdated status information, drawn from a Trademark Reporting And Monitoring (TRAM) system that the USPTO plans to retire sometime in 2024. The most accurate trademark status information can be found instead in the USPTO’s Trademark Status and Document Retrieval (TSDR) system, which is linked in individual search results. Training materials on how to use the new Trademark Search tool are available.

As noted above regarding patent developments, a new trademark (and patent) assignment recordation system called the Intellectual Property Assignment System (IPAS) is slated to become available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024].

More U.S. trademark filing information

Copyrights

AI-generated works usually not copyrightable

The U.S. Copyright Office requires that works be authored by a human to be copyrightable. In the generative AI context, authorship requirements begin by asking whether the work is basically one of human authorship, with the computer/AI merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by a human but by a machine. The Copyright Office takes the view that when an AI tool solely receives a prompt from a human and produces complex written, visual, or musical works in response, such prompts function like instructions to a commissioned artist and the person making the prompts is not considered an author. Accordingly, in that situation the resultant AI-generated work is not protectable by copyright. On the other hand, if AI-generated elements are further selected and arranged by a human, those aspects may be protectable, with the non-copyrightable AI-generated elements disclaimed.

In copyright registration applications, applicants have a duty to disclose the inclusion of AI-generated content and to provide a brief explanation of the human author’s contributions to the work. Given the interest in this area, the Copyright Office has an ongoing initiative and inquiry. Applicable policies and legal standards may continue to evolve.

Significant Developments in U.S. Courts

Patent enablement requirements reinforced

The U.S. Supreme Court unanimously ruled in Amgen v. Sanofi that “[i]f a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable.” This important decision reaffirmed a principle set out in cases going back more than a century, which preclude the grant of a patent monopoly extending beyond the invention actually disclosed. In this way, a central underlying premise of modern patent law was confirmed, that of a quid pro quo or “bargain” between the inventor(s) disclosing the invention and the public granting a limited monopoly in exchange. The Court discussed famous historic cases, including those involving Samuel Morse and Thomas Edison, as setting out the same enablement requirements.

In the Amgen case, in particular, the central issue revolved around the use of functional claim language that encompassed an entire genus of embodiments of antibodies coupled with the disclosure of inadequate teachings and embodiments pertaining to only a subset of species within that genus. The patentee Amgen had disclosed only a few (26) working examples plus a roadmap for a trial-and-error process that would have involved undue, “painstaking” experimentation to arrive at the entire claimed genus (encompassing at least millions of candidates). This was found inadequate and so the invalidation of the relevant claims for lack of enablement (under 35 U.S.C. § 112(a)) was affirmed.

A specification may call for a reasonable amount of experimentation to make and use a patented invention. Often that can be done by disclosing a general quality or general rule that may reliably enable a person skilled in the art to make and use all of what is claimed (and not merely a subset). But what is reasonable in any case will depend on the nature of the invention and the underlying art. Although not explicitly discussed in the Amgen case, courts have long recognized a distinction between so-called “predictable” arts like those involving mechanical and/or electrical inventions and “unpredictable” arts like those involving chemical and biotech inventions, as well as the amount of knowledge in the state of the art available to a person of ordinary skill. The more predictable the art, and the more knowledge a person of ordinary skill in the art would have, the less disclosure is required for enablement. Although even in the “predictable” arts enablement issues can arise, especially where “preemptive” functional or result-only claim language is used.

[Edit: in January 2024, the USPTO released guidance regarding the enablement requirement for utility patent applications in view of Amgen v. Sanofi. Existing USPTO practice of following the so-called Wands factors were essentially reaffirmed.]

Treatment of design patents continues to change

U.S. design patent practice has seen a number of significant shifts and important court decisions in recent years. Notably, there is currently a case called LKQ Corp v. GM Global Tech. Operations LLC pending rehearing that will clarify obviousness standards for designs, and how that standard is the same or different from obviousness for utility patents. At stake is whether design patents will be treated uniquely, with essentially a lower threshold for patentability (currently, obviousness is more difficult to establish for designs), or subject to basically the same non-obviousness standard as for utility patents.

Another controversial decision in the Columbia II case limited the use of “comparison” prior art in infringement analysis to highlight similarities or differences between the patented design and the accused product that might not otherwise be apparent to an ordinary observer. That case built upon recent emphasis on the title of design patents being limiting, and expanded on a prior case (In re Surgisil) that said only prior art pertaining to the same type of article claimed can be used for patentability analysis, even though prior precedential cases had said that considerations about use of an article are immaterial. The main takeaway is that the law around design patents continues to shift, and at least some judges have attempted to expand or strengthen design patentees’ power in ways that seem to depart from binding precedent.

District of Delaware holds patent case plaintiffs accountable

Chief District Judge Colm Connolly of the District of Delaware has implemented a standing order requiring disclosure of third-party litigation funding. This policy differs from some other districts (and other judges) that refuse to require such disclosures, even in response to discovery requests. These disclosure requirements help to identify real parties in interest to allow for recusal of the judge if a conflict of interest arises due to the judge having an ownership interest in the litigation funder.

In a set of patent cases brought by non-practicing entities believed to be connected to a common litigation funder, Chief Judge Connolly has issued sanctions and referred attorneys and a party to criminal prosecutors and state bars responsible for attorney licensing. These stem from allegations that the litigation funder is directing the litigation and attorneys are taking instructions from entities other than the named party in the lawsuit, which may constituent the unauthorized practice of law and/or a breach of attorney ethical obligations.

In at least one other case, these policies have also led to dismissal where litigation funder confidentiality agreements have precluded compliance with the Chief Judge’s funding disclosure requirements.

The significance of these probes and disclosure requirements is that these patent lawsuits are generally brought by corporate entities formed only for the purpose of bringing a patent lawsuit, and which have essentially no assets. The lack of assets by a shell company is used by litigation funders to try to shield themselves from liability for possible sanctions and attorney fee awards for bringing meritless or objectively baseless lawsuits. Occasionally, similar cases have involved accusations of sham assignments, which can impact the standing of the plaintiff to bring suit if ownership rights are illusory. These policies also bolster and supplement corporate disclosure requirements under Federal Rule of Civil Procedure 7.1, which on its face does not address things like contractual obligations that can curb settlement power or incentives, or when an entity has the power to control another through “negative control” or economic dependence standards applied by the U.S. Small business Administration to determine “affiliate” status and in turn to determine USPTO entity size status.

More generally, Chief Judge Connoly’s policies present some long-overdue limits on the use of courts to extract nuisance settlements, a problem that has been well-documented with respect to so-called “patent trolls”.

Prosecution laches

Certain cases have continued to apply so-called “prosecution laches” to render patents unenforceable. Prosecution laches is premised on prejudice to an accused infringer by the patentee’s unreasonable and inexcusable delay in prosecution of the asserted patent. Cases that apply this doctrine typically involve continuing applications. Recently, this doctrine has been applied in prominent cases by independent inventor patentees. These cases merit attention for a number of reasons. The criticized “egregious misuse” of the patent system is not something confined to a few isolated instances, but is rather commonplace. For instance, similar conduct in creating patent thickets with multiple continuation applications is routine in medical device patenting. And it is not uncommon for patentees to write claims in continuing applications to cover competitor products. Most significantly, the application of a laches defense is in tension with the Supreme Court’s 2017 SCA Hygiene decision saying that laches cannot be invoked as a defense against a claim for damages brought within the six-year limitations period of 35 U.S.C. § 286. The crucial issue is whether (or when) a judge-made policy can preclude use of statutory provisions allowing continuing applications. Also notable is reliance on unenforceability rather than, for instance, invalidity based on lack of enablement—many continuing applications of the sort that raise these questions would seem to be vulnerable to allegations of lack of enablement in the original disclosure, which is a statutory requirement.

Double patenting and patent term adjustment

In the In re Cellect case, the Federal Circuit held that patent term adjustment that differeed among patents in a family led to invalidity for obviousness-type double patenting, because the patents did not expire on the same date. This case is notable because it held that the judicially-created doctrine of double patenting led to unpatentability as a result of USPTO delay, despite the fact that this stemmed from a statutory provision (35 U.S.C. § 154) granting patent term adjustment. In other words, it presents a significant judicial/legislative separation of powers issue. On the other hand, double patenting concerns only arise when a patentee chooses to file multiple patent applications with overlapping scope.

Normally, double patenting can be overcome by filing a terminal disclaimer. But the In re Cellect case presented an unusual situation. It involved a reexamination of an already-expired patent, and terminal disclaimers are not permitted for expired patents. However, the decision in that case still established that a patent can be invalidated or found unpatentable as a result of USPTO delay, thus requiring terminal disclaimers in more situations than was generally believed necessary previously.

Copyright mandatory deposits found unconstitutional

The Court of Appeals for the D.C. Circuit has ruled in the Valancourt Books v. Garland case that the mandatory deposit requirement of the copyright laws (17 U.S.C. § 407) is unconstitutional under the Takings Clause of the Fifth Amendment of the Constitution. Mandatory deposits provided copies of works for archiving by the Library of Congress. Although some form of mandatory deposit requirement has been in place since the first copyright law was passed in 1790. But the D.C. Circuit ruled that subsequent amendments to the copyright laws had left mandatory deposits “untethered” from the benefits of copyright registration, rendering them a government taking without compensation prohibited by the Constitution. Penalties for failing to make a mandatory deposit will no longer apply.

Fair use eviscerated by Supreme Court

In a pair of rather shocking decisions (Jack Daniel’s and Andy Warhol Foundation), the U.S. Supreme Court has greatly limited “fair use” defenses with respect to both trademarks and copyrights. These decisions greatly reduce freedom to operate based on parody or artistic transformation defenses that were largely taken for granted for a long time under U.S. law, and reflect unconvincing treatment, if not outright disregard, for both fact and law. A return to prior treatment of fair use will apparently require legislative action, which is not likely in the near future.

Role of fraud in trademark matters

In the Great Concepts v. Chutter decision, the Federal Circuit held that fraud in a declaration of incontestability (under § 15 of the Lanham Act, 15 U.S.C. § 1065) cannot be used as a ground to cancel a trademark registration. This creates a split with the Ninth Circuit’s prior 1990 decision in Robi v. Five Platters, which held that a statement of incontestability that fraudulently asserted that there were no adverse decisions involving the registered mark justified cancellation. This means that this particular ground for challenging a registration will only be available in courts and not in Trademark Trial and Appeal Board (TTAB) administrative cancellation proceedings.

Significantly, the Federal Circuit did not reach a major point from the appealed TTAB Great Concepts decision holding that recklessness was sufficient to establish fraud. The Federal Circuit has generally taken an idiosyncratic view of fraud, and numerous past decisions (not limited to trademark law) have made it difficult to prove fraud—despite (or rather because of) the prevalence of accusations and circumstantial evidence of fraud. This issue is also loosely tied to the contentious Iqbal/Twombly “plausibility” pleading standards, which altered longstanding notice pleading requirements, and which research has shown allows judges to limit access to the courts (and associated evidentiary discovery) for certain types of claims for ideological reasons.

Crisis of legitimacy in judiciary continues

U.S. Supreme Court justices have been mired in ethics scandals and public confidence in the Court remains at or near record lows. These scandals have revolved around essentially influence/bribery concerns and deficient disclosure of income and “gifts” that call into question judicial impartiality. There was a recent introduction of a code of conduct formulated by the Supreme Court justices themselves with no clear enforcement mechanism—with the justices apparently taking the position that they have already been compliant with the new code of conduct, as an attempt to deflect the serious charges leveled against them rather than meaningfully address them. The judiciary’s self-policing has been criticized in general.

Specifically in the IP field, on September 20, 2023 Judge Pauline Newman was suspended for one year from the Federal Circuit, the court with exclusive appellate jurisdiction over patent lawsuits. At 96 years old, she is the oldest current serving U.S. federal judge, appointed by President Regan in 1984. Her suspension resulted from her refusal to cooperate with an investigation into her fitness due to health issues and her treatment of court staff. As of December 2023, she has still refused to either retire or cooperate with the official investigation, a course of conduct that has reflected poorly on her and, more broadly, has tarnished the reputation of the judiciary as a whole. Judge Newman continues to challenge her suspension and the investigation as a whole—on “libertarian” grounds that deny government authority and therefore sit uncomfortably with her role as a federal judge.

Additionally, an employment-related complaint by an administrative patent judge (APJ) at the USPTO for abuse of authority was initially sustained in May of 2023. The APJ had reported interference with Patent Trial & Appeal Board (PTAB) judge assignments through “panel stacking” in order to alter case outcomes (in a separate Freedom of Information Act [FOIA] case, the USPTO refused to disclose how often this occurred). Supervisors then retaliated against him. This matter points to more general transparency and credibility problems and a lack of independence of administrative judges (within the executive branch). It follows a 2022 Government Accountability Office report finding that a majority (67%) of APJs felt pressured by management to alter specific decisions in AIA proceedings and a smaller but still significant number (34%) felt similar pressure in ex parte appeals. It further follows the Supreme Court’s 2021 Arthrex decision, which held that APJ appointments violated the Appointments Clause of the Constitution but that such deficiencies were resolved by allowing PTAB decisions to be reviewed by the Director of the USPTO—essentially undermining APJ independence and objectivity in favor of protecting the political aspects of appointment authority. These issues also recall concerns about secret USPTO actions during application examination placing public relations / perception management concerns ahead of objective patentability requirements established by the legislature.

To foreign observers, the crisis of legitimacy in the U.S. judiciary might seem to merely extend a legitimacy problem with U.S. government action both domestic and worldwide, including investigations/proceedings against presidents past and present and conduct before bodies like the United Nations.

December 2023

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Tags Copyrights, Design Patents, Freedom-to-Operate (FTO) & Clearance, Litigation, Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Articles

Federal Circuit Columbia Decision Both Clarifies and Muddies the Proper Use of Comparison Prior Art

Post author By Austen Zuege

When can prior art be used to assess alleged infringement of a design patent? This has been an evolving area of U.S. patent law. The question matters because looking at only the asserted patent and the accused product might not allow an ordinary observer to understand the ways in which the patented design is similar (or dissimilar) from known designs. A recent court decision sheds some light on the issue while at the same time muddies the waters in light of past cases that reached seemingly different results.

When assessing design patent infringement, “when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art. . . .” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). This is essentially a three-way visual comparison, in which differences “that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer . . . .” Id. This is not about validity/invalidity but rather about how prior art informs the comparison of the patented design and the accused product to determine if there is infringement or not.

A recent Federal Circuit decision addressed what sort of prior art can qualify as comparison art. In the second appeal in an ongoing dispute, a Federal Circuit panel held that “to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., Nos. 2021-2299 and 2021-2338, Slip Op. at *21-23 (Fed Cir. Sept. 15, 2023) (“Columbia II“).

In reaching that conclusion, the Columbia II panel cited one Supreme Court case from the 1800s, plus Egyptian Goddess and further said that “[s]imilar examples abound”. But do they really? The Columbia decision cites only a single post-Egyptian Goddess precedential case that was not abrogated (ABC Corp. I v. P’ship & Unincorporated Ass’ns Identified on Schedule “A”, 52 F.4th 934 (Fed. Cir. 2022)), plus one non-precedential case (Wallace v. Ideavillage Prods. Corp., 640 F. App’x 970, 971, 975–76 (Fed. Cir. 2016) (nonprecedential)).

Two other case citations in Columbia II rely on portions of opinions (Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1318, 1324–25 (Fed. Cir. 2007) and Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1313, 1324 (Fed. Cir. 1998)) that dealt with the “point of novelty” analysis that was specifically overruled by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678-79 (Fed. Cir. 2008) (en banc). Columbia II’s citations do not include any identifications any portions of the cited cases that were abrograted, or otherwise explain why or how specific aspects of those point of novelty analyses were still valid and relevant—as was the case in Egyptian Goddess, there might still be similarities although the theoretical framework and thus the purpose of looking at the prior art is different.

Then in a lengthy footnote 8 the Columbia II panel attempts to explain away a prior precedential case that reached a seemingly contrary outcome, Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020). If an attorney submitted a brief written in such a manner, she would at a minimum probably be harshly scolded by the presiding judge(s), and at worst be sanctioned. But apparently this Federal Circuit panel (Judges Prost, Reyna, and Hughes) has no qualms about doing this themselves. It is possible to argue that the Columbia II decision, although designated as precedential by the panel, is actually non-precedential due to being in conflict with Lanard Toys. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (when Fed. Cir. panel decisions are in conflict, the later one is non-precedential).

In any event, one issue that footnote 8 of Columbia II does not fully address is the question of comparison art when the claimed article is specifically a simulation, and to the extent that it does that footnote may not be controlling. MPEP § 1504.01(d) (9^th Ed., Rev. 07.2022, Feb. 2023) deals designs attempting to claim articles that are simulations of something else. The Columbia case does not specifically address In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965), which dealt with the use of something other than the same article as prior art to affirm a rejection of a claimed design. There, the claimed design was a “promotional advertising souvenir”, whereas one of the prior art references was a mere “representation of a conventionalized teardrop.” Id. at 982-83. In particular, the claimed design showed a teardrop shape article that was hollow with transparent walls, within which appears a planar member shown in dotted lines, on which advertising matter is to be placed, and additional prior art was cited for the proposition that display devices inside of hollow transparent containers were known—the fact that the interior components were in broken lines meant that their specific content carried no patentable weight. Id. at 983-84. Partly the issue raised here is whether Wise was—or could be—abrogated by In re Surgisil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021), which did not specifically address Wise or a “simulation”-based rejection, or other seemingly contrary precedent like In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (“the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is. Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no question as to nonanalogous art in design cases”). Surgisil overturned a patent office rejection premised on the title of the application not limiting the scope of the claim of a pending design application, where the applied-for design was titled a “lip implant” but the cited prior art having essentially an identical shape was for an artist’s “stump” blending/smudging tool. That result in Surgisil stands in contrast to both Glavas, which said use and non-analagous art issues are irrelevant to patentability of designs, and Wise, which cited a mere representation of a teardrop that was not, specifically, a “promotional advertising souvenir” as claimed.

Another way to look at this is to say that footnote 8 of Columbia II is mere dicta and not binding, because Columbia II did not deal with allegations that an asserted patented design was a “simulation”. From that perspective, the footnote 8 discussion about waiver of arguments can be disregarded (the very fact that this discussion was placed in a footnote rather than in the main text provides some support for viewing it as mere dicta). This is significant because the Columbia II panel could not overrule Lanard Toys, and neither the Columbia II panel nor the Surgisil panel could overrule Wise or Glavas. See South Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982) (“the holdings of . . . the United States Court of Customs and Patent Appeals, announced . . . before the close of business September 30, 1982, shall be binding as precedent in this court.”); Newell, 864 F.2d at 765.

The Columbia II panel argues that “using the same scope for anticipatory prior art and comparison prior art makes good practical sense.” This is asserted without addressing the (“wise”) reasoning of the Wise decision, which set out contrary practicalities when an asserted design is alleged to be a simulation. That is, Wise pointed out that a design may not be patentable if it merely simulates a known shape from another context, and a patentee cannot obtain exclusive rights by merely reproducing essentially generic representations—a concern that in many ways mirrors cases about utility patent eligibility where results are recited coupled with only generic or conventional computerization hardware. Cf., e.g., Elec. Power Group, LLC v. Alstom SA, 830 F.3d 1350 (Fed. Cir. 2016) (claims were patent-ineligible abstract ideas because they did not require “use of anything but entirely conventional, generic technology.”).

Other areas that remain somewhat unresolved pertain to partial claims, multi-part articles, and language reflecting intended use. For instance, if a design patent is for a “motorcycle with windscreen,” is prior art to a motorcycle alone (without a windscreen) available as comparison art, or prior art to a windscreen in isolation? Or a combination of both motorcycle and windshield comparison references? Does the answer depend at all on whether or not broken lines are used in the patent to make a partial claim? There a risk that design patents could gain inappropriate coverage over combinations of known (useful) elements in their functional capacity if and when the only available prior art shows merely some but not all of the components together in a single reference. And what about mere intended use language in the title of the patent? If the claim is to a “cat toy” and the prior art was expressly marketed as a “dog toy”, can the dog toy be used as comparison art, when both cats and dogs could actually play with either toy? Both instances involve a toy (and an animal toy no less), and differ only in the intended use by a different animal. There is older precedent stating that “the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is.” Glavas, 230 F.2d at 450.

These sorts of questions put added emphasis on the still-ambiguous role of claim construction in design patent litigation, as well as the need to carefully select a title for a new design patent application. Parties to litigation now have added incentive to argue about claim construction in design patent cases, because the proper construction will determine not only the scope of the claim but also impact the availability of comparison prior art.

October 2023

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Tags Design Patents, Litigation, Patent Infringement, Patents

Patents Q&A

What Are Common Mistakes in Design Patent Applications?

Post author By Austen Zuege

There are certain requirements and interpretive frameworks that apply U.S. design patent applications that may not be intuitive. Many of these U.S. standards also differ significantly from the rules the apply to industrial design registrations in other countries. What follows is a guide to some common mistakes and misunderstandings around design patents and applications.

Additional information about acceptable practices for design patent applications can be found in the U.S. Patent & Trademark Office’s (USPTO’s) design patent application guide and in the Manual of Patent Examining Procedure (MPEP) Chapter 1500.

“Engineering” Style Drawings Treated Unfavorably

Designers may create computer-aided drafting (CAD) drawings to document their designs. These often follow engineering conventions, including the use of “tangent” lines to show the boundaries of a curved surface. However, U.S. design patent practice relies on the use of surface shading lines or stippling . This is any entirely different style and approach than familiar engineering standards. But there is no single explicit rule or statute about the permitted format of shading lines in design patent drawings.

Shading lines or stippling that contrast with the rest of a drawing are used to show curves, tapers, and other three-dimensional (3D) contours in design patent drawings. The arrangement and variable spacing of straight shading lines is commonly used to indicate the character of curvature or contouring. Shading lines that are not straight may also be permissible. Surface shading lines can be broken/discontinuous and/or light/thin to differentiate them from lines indicating surface ornamentation and/or the ornamental shape of an article itself. Although they must be used sparingly, with as few in number as practicable.

Other characteristics can also be represented by shading lines. For instance, equally spaced shading lines arranged parallel to each other are used to indicate flat surfaces. Shading lines or stippling can be used to distinguish open areas (like holes) from solid material as well. Also, oblique line shading is used to show transparent, translucent, and highly polished or reflective surfaces, such as a mirror. Elements visible behind transparent/translucent surfaces should be shown in light, full lines rather than in broken lines.

The following is an example used in the USPTO’s design patent application guide to illustrate straight, parallel shading lines with their spacing using to show curved edges of a sink. These shading or contour lines are discontinuous, each having a long unbroken segment plus a short, dot-like segment slightly spaced from an end of the long segment. In this example, other discontinuous shading lines are used to illustrate flat surfaces too.

Drawing of a sink showing use of spaced, straight shading lines in design patents — USPTO example of use of shading lines in design application drawings

The following example is also from the USPTO’s design patent application guide, and shows a wheel hub with a combination of shading lines and stippling. The shading lines indicate contouring/curvature and well as flat surfaces. Some of those shading lines are discontinuous while others are continuous but light lines. Contrast in materials or surface texture may be shown by using line shading in one area and stippling in another. In this example, the stippling can show matte surfaces in contrast with highly polished surfaces shown in line shading.

Drawing of a wheel hub showing use of a combination of shading lines and stippling in a design patent drawing — USPTO example of use of shading lines in design application drawings

The following is an example of non-linear (curved) shading lines used to illustrate 3D curvature of a vehicle mirror. These shading or contour lines are discontinuous to distinguish them. These types of shading lines are appropriate for illustrating more complex 3D shapes. In this example, broken (dashed) line(s) further illustrate the boundary of the claimed design, meaning that only a portion of the depicted article is part of this claimed design.

FIG. 1 of U.S. Pat. D427,554, showing use of shading lines to illustrate 3D contours of a vehicle mirror — FIG. 1 of U.S. Pat. No. D427,554

The following examples are drawn from a case about alleged infringement of two design patents covering a trash can and a recycling bin. Red arrows indicate lines whose meaning was disputed by the parties. The court construed the patents’ engineering-style drawings with curvature boundary tangent lines to mean visible ornamentation in the form of seams, paint, or something else that appears as actual lines on the trash can or recycling bin rather than merely conveying the boundaries of 3D contours where they transition to flat surfaces.

Annotated views with red arrows and blue circles labeling disputed lines in two trash can/recycling bin design patents — Annotated verisons of FIG. 1 of U.S. Pat. No. D644,807 for a “Slim Open Trash Can” (left) and FIG. 1 of U.S. Pat. No. D729,485 for a “Dual Recycler” (right) with red arrows and blue circles indicating disputed lines in *Simplehuman LLC v. iTouchless Housewares and Prods., Inc.*, 506 F. Supp. 3d 830 (N.D. Cal. 2020)

The court reasoned that because the purported drafting technique in the examples above made it impossible to distinguish contour changes from ornamental lines, and because such ambiguous usage raises indefiniteness concerns that should be discouraged, a “plain meaning” interpretation was adopted, finding that the disputed lines are lines (that is, ornamental features in the form of seams, paint, or something else that appear as actual lines on the articles). The patentee’s arguments that the disputed lines were shading or contour lines merely meant to demonstrate the general shape of the trash can/recycling bin were rejected.

The case later settled, and was dismissed without a final ruling on infringement. But the patentee would undoubtedly have lost under the court’s construction that the disputed engineering-style lines meant visible ornamental lines — neither the patentee’s own products nor the accused products had any features that resembled visible lines in the relevant locations.

The Title is Limiting

U.S. design patents are directed to ornamental features of useful articles. Significantly, they cover only particular articles that embody the claimed design, and not simply a “view” or “look” in the abstract (as is the case for industrial designs in some other jurisdictions). The words of the claim — which always says “as shown and described” — will limit the scope of the exclusive patent legal rights. Courts have said that the title of a design patent is limiting, where it names a particular type of article. And that is the case even if the drawings of a design patent do not illustrate any particular article. So the title and other words in a design patent application should be chosen carefully.

FIG. 4 of U.S. Patent D677,946, showing claimed pattern — “Pattern for a Chair” illustrated in FIG. 4 of asserted U.S. Pat. No. D677,946 (left) and accused storage bin product (right) from *Curver Luxembourg, SARL v. Home Expressions, Inc.*, 938 F.3d 1334 (Fed. Cir. 2019)

Exhibit photo of a stack of storage bins accused of infringement due to use of material pattern — “Pattern for a Chair” illustrated in FIG. 4 of asserted U.S. Pat. No. D677,946 (left) and accused storage bin product (right) from *Curver Luxembourg, SARL v. Home Expressions, Inc.*, 938 F.3d 1334 (Fed. Cir. 2019)

In the example reproduced above, a figure from a design patent shows a “Y”-shaped, rattan wickerwork-style pattern formed by a web of material. None of the figures in the patent illustrated the design being applied to a particular article, only the pattern formed by a portion of material shown in isolation. But the title of the patent is “Pattern for a Chair”. A court ruled that the patent’s claim was limited to a pattern for a chair, as specified in the title, and a lawsuit against a seller of a basket (not a chair) with a similar pattern making up the basket/bin walls was dismissed for failure to state a plausible claim of design patent infringement.

Sole figure in App. Ser. No. No. 29/491,550 (now U.S. Pat. No. D979,060) for a “Lip Implant”

Image of prior art “stump” art tool considered in In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021)

Limits on claim scope by the title or other text might help distinguish prior art. In the example images above, a design patent claim for the “ornamental design for a lip implant” was limited to lip implants. A court said that a prior art tool made of tightly spiral-wound paper called a “stump”, used by artists for smoothing and blending large areas of pastel, charcoal, or pencil, was directed to a different article than the claimed lip implant. Therefore, the prior art “stump” did not affect the novelty of the claimed design even though their shapes were essentially the same. However, an older case held that if the prior art discloses any article of substantially the same appearance it is immaterial what its use was, so this lip implant decision is in tension with that precedent.

The title of a design application can also potentially limit the prior art available as “comparison” art in a later three-way comparison of the claimed design, an accused product, and the closest prior art for an infringement analysis. Such a comparison can highlight differences (or similarities) in the overall appearance that might not otherwise be apparent to an ordinary observer. To qualify as comparison prior art, a notable court decision said that the prior-art design must be applied to the article of manufacture identified in the claim of the asserted design patent.

Partial Claims Are Permitted

It is possible to depict an article while using a partial claim that addresses the design of only a portion of that article. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design. For instance, when the design is for surface ornamentation, the shape of article to which the design is applied can be shown in broken lines.

example design patent application drawings showing broken lines to indicate a partial claim to only surface ornamentation on a jewelry cabinet — Example of partial claim to only a surface pattern on a jewelry cabinet article, for USPTO design patent application guide

Moreover, unclaimed things may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. For instance, a claimed design might be for the hood of a truck, only, with the rest of the truck shown in broken lines as unclaimed environment.

Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary.Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. In this situation, broken (dashed) lines are used to define the boundary of a design patent application claim. This practice in the U.S. departs from that of some other countries where partial claims are not permitted.

Additionally, structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design.

USPTO Will Often Not Permit Changes in Claim Scope by Amendment

One controversial aspect of U.S. design practice is that changes in claim scope are usually not permitted. While partial claims are permitted in design applications, and while claim amendments in utility patent applications are routinely permitted (even to remove limitations), since 2013 the USPTO does not ordinarily permit lines to be changed from solid to broken (dashed) to broaden the claim, or the reverse to narrow the claim. Instead, applicants are often forced to file a separate application with a different claim scope. While examiners have some discretion to permit drawing changes, such as to fix discrepancies by changing lines to broken ones, and the text of disclaimers or statements in an appendix might have some impact, those things are not certain to be effective under current law and practice.

This practice of precluding changes in design application claim scope extends an already controversial position taken by a U.S. appeals court that reads a so-called “written description” possession requirement into the U.S. patent statutes (relating to enablement) against their plain language and grammar. Note that there is also a clear incentive for the USPTO to require new filings instead of amendments in order to generate more filing fees.

Multiple Embodiments are Sometimes Permitted

It is possible to include multiple embodiments in a single U.S. design application. However, restriction practice still applies and may require dividing different embodiments/designs into separate applications. Because design applications can have only a single claim, multiple embodiments must be patentably indistinct to remain in a single case.

On the one hand, because design patents have a 15-year term from grant, later-filed and later-granted divisional applications will expire later. This might be desirable for some patentees. On the other hand, a restriction determination also has an impact on the scope of exclusive rights. For instance, if the applicant elects one embodiment but declines to pursue an unelected embodiment in a divisional application, the unelected/abandoned embodiment will effectively be surrendered and dedicated to the public. These considerations emphasize the need to think through the implications and potentially commit to filing multiple applications when multiple distinct design embodiments are involved.

Drawings Must be Definite and Enabling

Drawings in a design patent application must be consistent with each other. Discrepancies between different views can create indefiniteness and/or lack of enablement issues. For instance, if certain features are shown in one view but omitted in another, this may make it unclear what design is really being claimed. The use of inconsistent drafting techniques in different drawings can also lead to similar concerns. For instance, discrepancies in the use of shading lines, stippling, and/or broken lines can detract from required clarity. Particularly for highly complex illustrations, it is important to carefully review the drawings to ensure that they are consistent.

A frequent issue is when there are holes, cavities, protrusions, or the like and their depth or height is potentially uncertain in plan or elevation views. Sometimes examiners may require cross-sectional views to show the depth of such features. But clarifying sectional views cannot always be added after initial filing without impermissibly adding new matter–instead a new continuation-in-part application might be necessary.

Mixing Photographs and Line Drawings is Not Permitted

Black and white line drawings are preferred and ordinarily required in U.S. design applications. However, photographs can sometimes be used, particularly where there is surface ornamentation that is not reproducible in line drawings. Such photographs can have added lines, such as broken lines to indicate a boundary of the claimed design. But it is not permitted to have both photographs and line drawings combined in a single design patent.

It is possible to include a mix of photographs and line drawings in a new U.S. design application, which might have significance for priority claims or divisional filings, but the drawings must be amended and limited to one or the other type before grant. If photographs are included as informal drawings in a new application, then a disclaimer included in the specification or on the photographs themselves should be used to disclaim any color, surface ornamentation, logos, written matter, etc. that forms no part of the claimed design.

Color Can Be Claimed

Use of color presents many opportunities for procedural problems and well as unintended impacts on the scope of claimed design patent rights. Color can be claimed in a design patent application. However, the use of color drawings (including color photographs) requires filing a petition and paying a petition fee to have color drawings accepted. Also, there is a requirement that the specification include the following statement:

“The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.”

Instead of using color drawings, an alternative is to use black & white line drawings lined for color in accordance with the drawing symbols in MPEP § 608.02 (and reproduced in the USPTO’s design patent application guide). Essentially there are particular line patterns usable to represent specific colors. If this is done, the application must state “The drawing is lined for color.” The specific colors lined in the drawing(s) may also be identified in the specification for clarity, as a kind of legend that explains the lining patterns from MPEP § 608.02.

USPTO drawing symbols for draftsmen — USPTO design patent application guide “Symbols for Draftsmen”

Also, if color photographs are initially submitted as informal drawings (to later be replaced with formal drawings) and the applicant does not consider the color to be part of the claimed design, a disclaimer should be added to the specification as follows: “The color shown on the claimed design forms no part thereof.” The USPTO will consider color an integral part of the disclosed and claimed design in the absence of a disclaimer filed with the original application.

Appendices Are Permitted

Although not specifically discussed in MPEP Chapter 1550, the USPTO’s design patent application guide, or reported court cases, the USPTO currently permits design applications to include an appendix. The appendix is never published in granted design patents. An appendix can include text statements, such as a purported reservation of the right to change solid lines to broken lines or vice-versa, additional views or embodiments, which could be in the form of line drawings, photographs, or both. The main purpose of an appendix is to potentially provide support for a greater range of amendments and/or continuing applications after initial filing.

Applicants will sometimes not include an appendix because they are unaware that it is possible to do so. After all, the USPTO does not expressly discuss them in any of its regulations or procedural guidelines. Courts have not definitively ruled on the permissible use of design application appendices, however. Yet design examiners generally allow applicants to include and rely on them and generally do not object to their use.

Functional Aspects Are Not Protected

Sometimes design patent applicants wrongly believe that a design patent will cover functional aspects or a general idea. They do not. The type of subject matter that can be claimed in design patents is different from utility patents.

Design patent protection is limited to protection of ornamental aspects of a useful article. Purely functional aspects or a broader general design concept are not protected. Also, anything dictated by function, no matter how aesthetically pleasing, cannot be protected by a design patent. Where this becomes less clear is where design features are only partly functional, and they contribute at least some minimal ornamentation to the overall design. In those situations, the functional aspects limit the scope of protection in the overall design without completely precluding protection of the minimally ornamental aspects.

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Tags Design Patents, Litigation, Patent Prosecution, Patents

Copyrights Patents Q&A Trade Secrets Trademarks

How Can I Protect the Design of My Business’ Products?

Post author By Austen Zuege

Intellectual property (IP) rights might allow a business to obtain exclusive rights in some or all aspects of a product. Such IP rights can potentially include patents, trademarks (i.e., trade dress), copyrights, and trade secrets. But the types of IP that might apply will vary depending on the context of the product involved, and may require affirmative action to secure and maintain IP rights.

Consider patentability before any public disclosure or commercialization of a product in order to avoid potential loss of patent rights. Although other types of IP protection might be available, exclusivity in the design of a new useful product is first and foremost a question of potential patent protection.

Patent Protection

Patents can provide exclusive rights for a limited time in exchange for disclosure of an invention. An inventive product—and/or a process or method associated with making or using it—can be protected with a utility patent. However, a patent application must be filed within one year of public disclosure or commercialization (or, in other countries, before any public disclosure). The invention must also satisfy three criteria for patentability: utility, novelty, and non-obviousness. The latter two criteria depend on the scope and content of the prior art. A patentable invention cannot already be known and must represent a non-trivial advance over what was already known. These assessments are made in an absolute sense. Prior art is not limited to commercially available products. And it does not matter whether or not the inventor actually knew about the relevant prior art.

The ornamental appearance of a useful article can be protected with a design patent if the ornamental design is novel and non-obvious. Design patents can cover surface ornamentations for an article of manufacture, the ornamental shape or configuration of an article of manufacture itself, and combinations of those categories. Abstract designs (e.g., a picture standing alone) are not patentable.

Trade Dress / Trademark Protection

Trade dress (a form of trademark protection) may also protect the distinctive, nonfunctional appearance of a product or its packaging. However, trade dress protection only arises in aspects of product configuration that serve as a trademark to allow consumers to identify the source of the product. Trade dress never protects functional aspects of product configuration or packaging. In other words, it is limited to aspects that relate to the manufacturer or seller’s reputation and not to the usefulness of the thing itself.

In the U.S., trade dress protection requires achieving acquired distinctiveness once secondary meaning has developed in the minds of consumers based upon substantially continuous exclusive use for a sufficient period of time (generally a minimum of five years). Trade dress will not provide exclusive rights in product configuration at the time of a new product’s launch, though it might for packaging.

Copyright Protection

Copyright might apply to certain aspects of products, such as product labels or decorative graphics applied onto a product. But copyright will not protect useful or functional parts, only those creative aspects that are conceptually separable and capable of existing apart from the useful or functional parts. For example, a lamp that incorporates a sculpture could have copyright protection in the sculptural elements but purely functional electrical components that allow the lamp to illuminate would not have copyright protection. The text of software code can be copyrightable but not the functionality enabled by software (which might be patentable instead).

Trade Secret Protection

Trade secret protection will not apply to publicly visible or readily ascertainable aspects of a product. But things like the “secret formula”, manufacturing methods, or aspects of embedded software might be protectable as trade secrets if they are not generally known and not readily ascertainable and you take reasonable measures to keep such things secret.

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Tags Copyrights, Design Patents, Patents, Trade Dress, Trade Secrets

Patents Q&A

Can You Patent a Software App?

Post author By Austen Zuege

Patents are available for inventions. Software per se is not patent eligible—source code text is copyrightable instead. But a system, apparatus, or device configured to execute particular software-driven functions may be patent eligible and a method (or process) that is computer-implemented via software may also be patent eligible. Ornamental aspects of software-driven graphical user interfaces (GUIs) are also eligible for design patent protection. So, a software “app” (application) as a discrete whole is usually not patentable as such but a patentable invention might include or implicate some software-based aspect.

The U.S. Supreme Court has said that “abstract ideas” are not patent eligible, which narrows the types of software-based inventions that are patentable. A software-based invention that consists only of well-known concepts, mathematical calculations, data processing/manipulation/selection/presentation, what could otherwise be performed as purely mental steps, or the like plus merely generic computer hardware is generally not patent eligible. Software that provides no more than an allegedly improved user experience is also generally not patent eligible.

Patent eligibility hinges on the particular “claims” in a patent application or granted patent, which establish the scope of a patentee’s exclusive rights. More narrowly-drawn claims that focus on a particular inventive feature (e.g., a detailed computer-implemented algorithm) that solves a specific technological problem (e.g., improves computer hardware performance as a tool or transforms physical outputs in a new or improved way) are more likely to be patent eligible than broad, highly abstract claims (e.g., attempting to patent any insertion of an ad before an online streaming video plays). In this sense, software patent eligibility is highly dependent on how the claims are written, an area where patent applicants have wide latitude. Attempts to obtain a broad “preemptive” (or we might say greedy) patent monopoly that exceeds the quid pro quo of the inventor’s contribution to the useful arts raise the most concerns.

Additionally, a software-based invention must be both novel and non-obvious over the prior art to be patentable, just as with any type of invention. In this respect, all invention, software-based ones included, must represent a non-trivial advance over what is already known in order to be patentable. Whether the inventor actually knew about the closest prior art or not is irrelevant—any and all prior art represents a potential barrier to patenting a new invention.

In summary, while you generally cannot patent a software app as a stand-alone product, aspects of software-enabled products or processes may be patent eligible. The real answer to this question is that it often depends on the what invention is, what was known before, and how you try to claim a software-based invention in a patent application.

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Tags Design Patents, Patent Prosecution, Patents, Software

Patents Q&A

What Types of Patents and Patent Applications are Available?

Post author By Austen Zuege

There are a number of different types of patents and patent applications. The available types of patents and patent applications also vary by country. Before turning to those specifics, an important initial distinction to note is between a patent application and a granted patent.

Patent Applications Versus Granted Patents

A patent and a patent application are not the same thing. This is a common source of confusion for those unfamiliar with patent law.

Patent Applications

A patent application is essentially a request by an inventor/applicant to obtain a patent. It is a custom-prepared document rather than a template form that is filled-in. Simply filing a patent application does not by itself entitle the applicant or inventor to enforceable legal rights. More is required to secure enforceable exclusive rights in an invention. Filing a patent application is just the first step in that process. Importantly, applications generally have to undergo an official examination to assess patentability. The applied-for invention may or may not be patentable.

Pending patent applications are normally (but not always) published after approximately 18 months. This means that there are publicly-available “patent application publications” or “published patent applications”. But these still only pertain to a (pending) patent application as opposed to a (granted) patent. A patent application publication, alone, is not enforceable.

There is really nothing final about a patent application when it comes to rights in an invention. Whether published or unpublished, the existence of a patent application really only means that someone currently is or was in the past pursuing patent protection. A good analogy is somebody filing a complaint to a commence a lawsuit: they hope to win, eventually, but merely initiating the lawsuit is not the same as a final judgement on the merits. There can be changes to a patent application while it is pending. So the published version of a given application may not fully reflect its current contents. And patent applications can be abandoned entirely.

Granted Patents

A patent is granted (or issued) by a government as a “public franchise” and gives the owner(s) exclusive rights to an invention. The scope of the enforceable legal rights are defined by the claim(s) of the patent. A patent is also enforceable only in a given jurisdiction. There is no such thing as an international patent enforceable throughout the world. So obtaining exclusive legal rights in multiple countries usually requires obtaining patents in each of those individual countries—though a few regionally-enforceable patents exist outside the USA. In the U.S., a granted patent is presumed valid because it has undergone pre-grant examination to assess patentability. Though even granted patents can still be challenged.

Every patent starts out as a patent application. And there may be multiple patent applications related to a given patent. But, on the other hand, any given patent application might or might not turn into a granted patent. A patent office may reject the patent application because the claimed invention is unpatentable, for instance. Or an applicant may simply abandon an application before a patent is granted for a variety of reasons.

Patent Families

Patents and patent applications that are formally related to each other are often referred to as a patent “family”. This includes reference to “parent” and “child” patents and applications.

Types of Patents

There are three types of patents available in the United States for different types of inventions:

Utility
Design
Plant

Utility patents are directed to useful inventions. If someone refers merely to a “patent”, chances are they mean a utility patent. Most U.S. patents are utility patents. In other countries these may have a slightly different name, like invention patents in the People’s Republic of China.

Design patents are directed to inventive ornamental designs of useful articles. They do not cover functional features or designs in the abstract—unconnected to an article of manufacture. In some other countries, designs are not covered under patent laws but instead as either “industrial designs” that are a unique type of protection or something closer to trademark (trade dress) protection.

Plant patents cover inventive asexually reproduced plants. Some inventions related to plants can be protected by utility patents, which is to say that a plant patent is not the only possible type of patent protection available for plant-related inventions.

The types of available patents are not the same around the world. In some countries, utility models or petty patents are available. But those types of patents do not exist in the USA.

Types of Patent Applications

There are a number of different types of patent applications in the USA:

Provisional
Nonprovisional
- Continuing Applications:
  - Divisional
  - Continuation
  - Continuation-in-Part (CIP)
PCT International Application (and associated National Phase Entry)
Hague International Design Application
Reissue

Provisional applications are not examined but can be relied upon by a later-filed non-provisional application claiming “priority” to the provisional. They serve as a kind of temporary placeholder to preserve rights to file a nonprovisional application within a year. Provisional applications are available only for utility and plant inventions. They are not available for design inventions. The U.S. and a few other countries permit provisional applications but most countries do not.

A nonprovisional application is essentially just a regular patent application. It can be an application for a utility, design, or plant invention. Nonprovisional applications in the U.S. undergo substantive examination and can potentially result in a granted patent.

Continuing applications are special types of nonprovisional applications that claim priority to an earlier, co-pending domestic U.S. nonprovisional application or PCT international application designating the U.S. But an application with a priority claim to a prior foreign application or U.S. provisional application is not considered a continuing application. What is called a “divisional” application in many other countries might be called either a “continuation” or “divisional” application in the U.S.

The PCT system, which is administered by a United Nations agency (WIPO), provides a sort of application clearinghouse to facilitate the pursuit of patent protection in various participating countries. But the PCT system still requires action in individual countries or regions. At the start, a (single) PCT international application that designates selected participating countries (usually all participating countries) is filed in a “receiving office”. The international application can then later enter the national phase (or regional phase) in one or more designated countries or regions. A PCT national (or regional) phase entry is actually not separate from the PCT international application but merely represents a different (national/regional) phase in the life of the same international application.

Hague international design applications are roughly the equivalent of a PCT application but for design inventions.

Reissue applications are applications to correct an error in an issued patent. In other words, reissues only arise after a patent has already been granted. Broadening reissues, which enlarge the scope of the claim(s), must be filed within two years of grant of the underlying patent. Other (non-broadening) reissue applications are not subject to the two-year filing deadline. Grant of a reissue results in surrender of the original patent.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

Tags Design Patents, Patent Prosecution, Patents, Plant Patents

Patents Q&A

What Is a Design Patent?

Post author By Austen Zuege

There are three types of patents available in the United States: utility patents, plant patents, and design patents. Each type of patent addresses different types of inventions. What does a design patent cover?

A design patent covers a new, original ornamental design for an article of manufacture. (35 U.S.C. § 171). Put another way, a design patent protects the overall visual appearance of a useful article. This can involve surface ornamentation applied to or embedded in the article, the shape of the article itself, or combinations of such things.

Front page of Albert Einstein's U.S. Design Patent No. D101,756 for a blouse — Front Page of Albert Einstein’s U.S. Design Patent No. D101,756 (left) and Front Page of U.S. Design Patent No. D168,677 assigned to Apple, Inc. (right); *see also*, *e.g.,* Thomas Rinaldi, *Patented: 1,000 Design Patents* (2021)

Front Page of U.S. Design Patent No. D168,677 for an Electronic Device assigned to Apple, Inc. — Front Page of Albert Einstein’s U.S. Design Patent No. D101,756 (left) and Front Page of U.S. Design Patent No. D168,677 assigned to Apple, Inc. (right); *see also*, *e.g.,* Thomas Rinaldi, *Patented: 1,000 Design Patents* (2021)

It is important to note what design patents do not cover. They do not protect designs in the abstract that are unconnected to an article of manufacture. An original artistic painting is copyrightable but cannot be the subject of a design patent because there is no article of manufacture present. Also, design patents do not cover useful features as such, only ornamentation. Useful aspects are properly addressed only in utility patents. Anything with an appearance entirely dictated by function lacks ornamentality. However, a design patent must relate to a useful article and aspects of the claimed design can be useful, so long as there is visual ornamentation that—as a whole—goes beyond the purely functional aspects.

In many other countries, designs are not covered by patent law but rather “industrial designs” are registered as a different type of intellectual property (IP). Other countries sometimes administer industrial design registrations in a manner adjacent to or related to trademarks.

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Tags Design Patents, Patents

Articles

Conceptualizing Negative Limitations in Design Patents

Post author By Austen Zuege

Is it possible for a U.S. design patent claim to include a negative limitation? It does not appear that courts have explicitly addressed this question. That is partly due to emphasis on design patent claims and infringement analyses revolving around the design as a whole, which can lead to rather conclusory decisions. But the question posed here is whether a claimed ornamental design as a whole can contain within it one or more “negative limitations” that effectively indicate the absence of some ornamental aspect, as opposed to indicating the positive (or affirmative) presence of an ornamental aspect. Certain past cases have touched on similar issues without specific reference to “negative limitations” in the sense that term is used with regard to utility patent claims.

Consider a design patent claim that shows as part of the overall ornamental design a flat surface, that is, a solid planar surface that is plain and uninterrupted. Does such a depiction include a negative limitation of sorts that excludes the presence of ornamentation on the surface? That is, does it give rise to a potentially significant overall difference when comparing a perforated surface or a surface that has substantial non-planar texturizing surface ornamentation? The same questions might arise, for instance, when a claimed design depicts only a single element (such as a single rounded corner, single support bar, single hole, etc.) but the accused product includes more than one of those elements.

In general, design patent infringement analysis involves two steps: (1) claim construction and (2) comparison of the properly construed claim to the accused product. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). Theoretically, at least, questions about “negative limitations” in design patents could potentially arise in either of those two steps.

While, certainly, a jury can always reach an ultimate infringing/non-infringing conclusion, in the binary sense, based on the particular and specific facts at hand in any given case. But the topics at hand here are how courts should treat the legal issues surrounding how a finder of fact might be presented with design patent infringement questions where negative limitation issues are present, and also how courts making dismissal (Rule 12(b)(6)), summary judgment, judgment on the pleadings, judgment as a matter of law (JMOL), or appeal decisions can explain their reasoning under the ordinary observer test when negative limitations may be present.

Negative Limitations in Design Claim Construction

Design patent infringement analysis begins with claim construction. Although claim construction is also the first step in utility patent infringement analysis, design patent claim construction differs from that for utility patents in some important ways.

A patentable design “gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 525 (1871); see also Samsung Elecs. Co., Ltd. v. Apple Inc., 580 U.S. ___, 137 S. Ct. 429, 432-33 (2016). This means design patent claim construction must be adapted to the pictorial setting. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010). In that sense, the Federal Circuit has said that “[d]epictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings.” Id.; see also Dobson v. Dornan, 118 U.S. 10, 14 (1886) (a claimed design “is better represented by the photographic illustration than it could be by any description, and a description would probably not be intelligible without the illustration.”).

The Federal Circuit has cautioned that detailed verbal claim constructions increase “the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (en banc). For such reasons, the level of detail to be used in describing the claimed design is a matter within a court’s discretion, and a court is not obligated to issue a detailed verbal description of the design if it would not be helpful. Id. at 679-80. Yet a court may use claim construction to help guide the fact finder through issues that bear on claim scope. Id. at 680.

Although not always at issue in every case, design patent claim construction can address prosecution history estoppel and prosecution history disclaimer. See Egyptian Goddess, 543 F.3d at 680. In general, the doctrine of prosecution history estoppel prevents a patentee from “recaptur[ing] in an infringement action the very subject matter surrendered as a condition of receiving the patent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 734 (2002). It requires that “the claims of a patent be interpreted in light of the proceedings in the [US]PTO during the application process.” Id. at 733. The Federal Circuit has specifically held that prosecution history estoppel applies to design patents too. Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014).

However, for design patents, unlike with utility patents, “the concepts of literal infringement and equivalents infringement are intertwined.” Id. at 700-01. Because it is the drawings of the design patent that provide the description of the invention, courts “look at the requisite drawings in design patents to determine whether a surrender has occurred.” Id. at 702. Estoppel arises when a narrowing amendment is made to satisfy any requirement to secure the grant of the patent, including amendments to avoid prior art or resulting from a restriction requirement. Id. at 703-04; see also Advantek Marketing Inc. v. Shanghai Walk-Long Tools Co., 898 F.3d 1210, 1216-17 (Fed. Cir. 2018).

In the Pacific Coast Marine Windshields case, a design application (for U.S. Des. Pat. No. D555,070) originally included drawings depicting—and claiming—multiple embodiments of a boat windshield. As reproduced below, the various originally-claimed embodiments showed the claimed windshield design with different vent hole configurations and also showed claimed designs that included and excluded a hatch on the front of the windshield. The examiner issued a five-way restriction requirement, identifying five distinct groups of designs as windshields with:

four circular holes and a hatch (FIG. 1);
four circular or square holes and no hatch (FIGS. 7 and 12);
no holes and a hatch (FIG. 8);
no holes and no hatch (FIG. 9); and
two oval or rectangular holes and a hatch (FIGS. 10 and 11).

Grid of selected original figures from the application for Des. Pat. No. D555,070

In that sense, the examiner indicated that many of the different embodiments (but not all of them) represented different design inventions. In response, the patentee removed alternate embodiments, thus deleting those alternate embodiments from the scope of the claim. That prosecution history had significant implications to the scope of the claim in the granted design patent before the court (D555,070). Incidentally, the patentee chose to file only one subsequent divisional application to the “no holes and a hatch” embodiment (that became U.S. Des. Pat. No. D569,782), apparently without pursuing any other of the original alternate embodiments—though a continuation application (that became U.S. Des. Pat. No. D593,024) based off the divisional was also later filed for a partial design to only the vertical corner posts with no vent holes (with the windscreen portions unclaimed, thus potentially avoiding hatch vs. no hatch questions).

Malibu Boats, LLC’s accused product (left) and FIG. 1 of U.S. Pat. No. D555,070 (right)

Noting that treatises and prior district court decisions had said similar things in the past, the Federal Circuit ruled that surrender of claims to the alternate designs was for reasons of patentability that caused prosecution history estoppel to attach. Pac. Coast Marine Windshields, 739 F.3d at 702-04. However, because the accused windshield product’s design had three vent holes (see above) but the patented design had four vent holes (see FIG. 1 above) and the surrendered embodiments/designs had only two vent holes (see original FIGS. 10 and 11 above), summary judgment of non-infringement was reversed and the case was remanded to the district court for further proceedings. Id. at 704-05. In other words, without reaching a definitive infringement/non-infringement decision, the patentee was barred from arguing that the design patent’s claim covered a two-hole design (or any other surrendered embodiments) but was still able to argue that a three-hole design might be covered because there was no surrendered three-hole embodiment in the original drawings. (The Federal Circuit decision did not address potential differences in the horizontal/angled frame or trim aspects of the accused design as part of the overall appearance analysis). After remand, and denial of subsequent summary judgment cross motions (which included inventorship disputes, and non-patent issues), the parties eventually settled.

Generally similar negative limitation issues have arisen in utility patent cases. For example, the Spine Solutions case involved questions of claim construction and prosecution history estoppel for a utility patent. Claim 1 of the patent in question recited “a single anchor on each of the upper surface of the upper part and the lower surface of the lower part . . . .” The relevant claim construction implicitly regarded the “single anchor” recitation as including a negative limitation, that is, requiring one anchor having the recited characteristics but excluding the presence of more than one anchor. There was no infringement by the accused device, which had two anchors rather than a “single” anchor as claimed. The Federal Circuit reasoned as follows:

“We agree with [the accused infringer] Medtronic that the court erred in determining that [the accused] O-Maverick [device] literally infringes claims 1 and 2. The [district] court construed ‘single anchor’ to mean, in relevant part, that ‘[t]he upper and lower surfaces of the implant each have one anchor having the characteristics recited in the last paragraph of [claim 1].’ Claim Construction Order, 2008 WL 4831770, at *14, 2008 U.S. Dist. LEXIS 116648, at *43 (emphasis added). A simple observation of [the accused] O-Maverick [device] confirms that the implant has two anchors on each of the upper and lower pieces, not one. The anchors are separated by a one-millimeter gap that extends all the way to the base of the implant; at no point are the two anchors joined or connected in any way. O-Maverick clearly has two anchors on each piece, not a ‘single anchor’ as recited by claims 1 and 2. Therefore, we hold as a matter of law that [the accused] O-Maverick [device] does not literally infringe claims 1 and 2.
“During prosecution, applicants expressly distinguished the claimed invention over the ‘477 patent by asserting that ‘a reference disclosing two anchors does not disclose a device affirmatively claiming a single anchor… reciting a negative limitation in the form of a single element is not disclosed by prior art which teaches more than one element.’ J.A. 17524. This is a clear disclaimer of claim scope, and prosecution history estoppel therefore bars [the patentee] SSI from arguing that a two-anchor device is equivalent to the claimed implant. Because we hold that [the accused] O-Maverick [device] is a two-anchor device, SSI cannot argue that O-Maverick infringes claims 1 and 2 under the doctrine of equivalents.”
Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1316-17 (Fed. Cir. 2010).

What all these cases emphasize is that negative limitations can be at issue for design patent claim constructions, just as in utility patent cases. Prosecution disclaimer or prosecution estoppel issues resulting from arguments or amendments to a design application are especially relevant here. The Pacific Coast Marine Windshields case illustrates how those issues should be assessed as part of a design claim construction, if and when they arise. Other cases also indicated how this can be significant with respect to words in the design patent claim — such as words in the title that restrict the scope of the claim to a particular article of manufacture. Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); In re SurgiSil, L.L.P., No. 2020-1940 (Fed. Cir. Oct. 4, 2021). It is possible a design patent might include words like “individual” in the title that could include a negative limitation.

What is less certain for design patent claim construction is what role, if any, negative limitations have when the feature in question is something that appears in a drawing but there was no prosecution history disclaimer or estoppel. Because detailed design claim constructions that translate visual depictions into words are disfavored, it would not be appropriate in most situations to single out a particular visual element and explicitly construe it as containing a negative limitation (in the absence of a disclaimer or estoppel). That would depart from the context of the ordinary observer analysis and the requisite visual analysis of the overall appearance of the ornamental design.

Yet there may be instances where a negative limitation appears in relation to functional features, for example. The Federal Circuit has held that a claim construction may help the fact finder “distinguish[] between those features of the claimed design that are ornamental and those that are purely functional.” Egyptian Goddess, 543 F.3d at 680 (citing OddzOn Prods., 122 F.3d at 1405). A design may contain both functional and ornamental elements, even though the scope of a design patent claim “must be limited to the ornamental aspects of the design.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333 (Fed. Cir. 2015). “Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.” OddzOn Prods., 122 F.3d at 1405; accord Ethicon Endo-Surgery, Inc., 796 F.3d at 1333. This ensures that the claim is limited to the ornamental aspects of the design, and does not extend to “the broader general design concept.” OddzOn Prods., Inc., 122 F.3d at 1405; see also Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed. Cir. 1992) (“[w]here . . . a design is composed of functional as well as ornamental features, to prove infringement a patent owner must establish that an ordinary person would be deceived by reason of the common features in the claimed and accused designs which are ornamental.”). But a construction of design features that are only partly functional, with some at least minimal ornamentation, must not entirely eliminate whole aspects from the scope of the claim, even as the functional elements limit and narrow the claim scope. See Sport Dimension, Inc. v. Coleman Co., Inc., 820 F.3d 1316, 1322-23 (Fed. Cir. 2016); Apple Inc. v. Samsung Elecs. Co., Ltd., 786 F.3d 983, 998-99 (Fed. Cir. 2015).

Negative Limitations in Comparisons Between Claimed Design and Accused Product

Following claim construction, if any, the design patent’s claim as construed is compared to the allegedly infringing products. Elmer, 67 F.3d at 1577. When considering infringement of a design patent, the “ordinary observer” test is the sole test for determining if infringement has occurred. Egyptian Goddess, 543 F.3d at 678 (rejecting the use of a separate “point of novelty” test); Crocs, 598 F.3d at 1303. Under the ordinary observer test, infringement occurs:

“if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”
Gorham, 81 U.S. at 528; Egyptian Goddess, 543 F.3d at 670-71.

This test has been codified in the patent laws, which provide as follows:

“Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.”
35 U.S.C. § 289

Thus, as the ordinary observer test is sometimes described, infringement is not found unless the accused article embodies the patented design or any colorable imitation of it. Egyptian Goddess, 543 F.3d at 678 (citations omitted). Though recall that for design patents “the concepts of literal infringement and equivalents infringement are intertwined.” Pac. Coast Marine Windshields, 739 F.3d at 700-01.

Against that backdrop, the question of potential negative limitations can arise in the context of whether logos (or the like) present on the accused product can or should be considered when comparing it to the design patent claim to determine if there is infringement.

It is necessary to compare the claimed design (as construed) as a whole to accused product. Ethicon Endo‐Surgery, 796 F.3d at 1335; Crocs, 598 F.3d at 1302-06. This is to say that in the “ordinary observer” analysis, the patented design is viewed in its entirety, as it is claimed. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993). “[A]ll of the ornamental features illustrated in the figures must be considered in evaluating design patent infringement.” Contessa Food Prods., 282 F.3d at 1378. “A patented design is defined by the drawings in the patent, not just by one feature of the claimed design.” KeyStone Retaining Wall Sys., 997 F.2d at 1450. This means the comparison of the claimed design (as construed) to the accused product must generally include all of the patent figures in comparison, and it cannot merely compare separate elements in isolation or involve serial element-by-element comparison.

Yet an infringement analysis that recites significant differences between the ornamental features of the claimed and accused designs is still acceptable if, in determining infringement, that analysis still mainly focuses on whether an ordinary observer would be deceived into thinking that the accused product’s design was the same as the patented design. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295-96 (Fed. Cir. 2010). It is in that sense that negative limitations can be used to help articulate significant differences from the standpoint of an ordinary observer.

Along those lines, the Federal Circuit has held that the finder of fact can consider “an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1131 (Fed. Cir. 2019). In a subsequent August 2021 trial under that guidance, a jury found no infringement. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781 (S.D. Cal. Aug. 6, 2021) (jury verdict of non-infringement). The parties subsequently cross appealed.

In Columbia, the patent owner sometimes made a comparison of only a selected portion of the claimed design to the accused product in briefing. This had the effect of broadening the asserted claim. For instance, in the first comparative example below for district court summary judgment briefing, note how the claimed design uses broken lines in FIG. 1 to show that a boundary exists but is unclaimed (see MPEP § 1503.02(III) (9th Ed., Rev. 10.2019, June 2020)). But the claimed design of FIG. 1 includes a generally sinusoidal wave pattern with four full crests and five full troughs that appear uninterrupted between the broken line boundaries; whereas in a comparison table used in briefing only part of the claim with merely three full (and uninterrupted) crests and troughs was reproduced as allegedly being the “Patented Design”. And in the second example below, from appellate briefing, note how FIG. 2 is used by the patentee for comparison despite the asserted design patent stating that “FIG. 2 is an enlarged elevational view thereof, taken from any area in the design” (that is, FIG. 2 merely shows an enlargement of a portion [with]in the claimed design but does not show the entire claimed design). If we analogize this to the utility patent context, it is like comparing a selected claim limitation to the accused product in isolation without addressing one or more additional limitations present in the claim. The significance of the accused product’s interruption (with repeating logos) in comparison to the claimed uninterrupted design was a key issue in the case including its appeals. So the question of what constitutes the full scope of the claimed design is foundational to what is or is not interrupted in the accused product.

FIG. 1 of U.S. Design Patent NumberD657,093 — FIG. 1 of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s March 7, 2016 Motion for Partial Summary Judgment (right)

FIG. 1 of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s March 7, 2016 Motion for Partial Summary Judgment (right)

Portion of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s September 18, 2018 Appellate Response and Reply Brief Showing FIG. 2 of U.S. Des. Pat. No. D657,093 Overlaid on Photo of Accused Product (right)

The district court declined to construe the design patent claim with a detailed verbal description in its Markman order, or to provide any other construction or guidance about design patent conventions, but instead later provided jury instructions that stated:

“A design patent’s claim defines what is covered by the patent. The claim is typically represented by illustrations. It is permissible to illustrate more than one embodiment of a design in a single design patent application. Each design patent contains multiple drawings to illustrate the claimed design.
The scope of the claim encompasses the design’s visual appearance as a whole. It does not cover a general design concept and is not limited to isolated features of the drawings. An inventor’s subjective intent is not relevant to the scope of the claimed design”
Quote from Jury Instruction No. 9 (as filed Aug. 6, 2021)

That jury instruction (No. 9) was largely generic. It could have been issued in any design patent case without changing a word. Neither the jury instruction nor the Markman order specifically addressed the proper interpretation of the language describing FIG. 2 quoted above, which is part of the claim. Most significantly, the jury was not instructed to disregard the presence of logos on the accused product (as Columbia had sought). But, additionally, the jury was not instructed about whether the asserted design patent actually included multiple embodiments or whether certain drawings showed the same design or merely incomplete portions of it. That meant that, in the Columbia case, there was no express “negative limitation” claim construction. Instead, everything came down to the comparison of the overall appearances.

“To determine infringement of a design patent, you must compare the overall appearances of the accused design to the Design Patent. The accused design is Seirus’s HeatWave fabric. If you find by a preponderance of the evidence that the overall appearance of the accused design is substantially the same as the overall appearance of the Design Patent, you must find that the accused design infringed the Design Patent.
Two designs are substantially the same if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the resemblance between the two designs is such as to deceive an ordinary observer, inducing him to purchase one supposing it to be the other. You do not need, however, to find that any purchasers were actually deceived or confused by the appearance of the accused products. You should consider any perceived similarities or differences between the patented and accused designs. Minor differences should not prevent a finding of infringement.”
Quote from Jury Instruction No. 10 (as filed Aug. 6, 2021)

The jury instruction (No. 10) regarding the comparison step did mention the accused product by name. But otherwise that instruction is also fairly generic. Jury instructions nos. 11-13 also pertained to design-patent-specific issues, including comments about the proper use of prior art in instruction no. 11.

The district court could have provided further claim construction guidance. But it chose not to. As already noted, the jury held that the patented design was not infringed. On the next appeal, there will surely be a dispute over the ultimate verdict of non-infringement of the design patent, but also perhaps about the mostly generic jury instructions related to design patent claim construction and infringement analysis and how those impact any “negative limitations” in the design patent claim. Though, interestingly, at the district court neither party really argued this point regarding the proposed final jury instructions for the August 2021 trial (most of the arguments over those instructions instead centered around what could be ignored, proper consideration of marketing materials evidence, how functionality should be referenced if at all, and the relevance and proper role of alleged prior art).

Conclusion

The appropriate way to address “negative limitations” in design patent claims is: first, to address in claim construction any prosecution history disclaimer or prosecution history estoppel issues that might give rise to recapture issues around such “negative limitations”, as well as any relevant interpretations of the text of the claim (including the title and description) that might do the same; and, second, to articulate the way design features affirmatively present in the accused design represent significant differences from such “negative limitations” in the claimed design in an analysis that still mainly focuses on whether an ordinary observer would be deceived into thinking that the accused product’s design was the same as the patented design overall.

The first aspect might not be relevant in all cases. Those questions will be highly dependent on the content of the asserted design patent claim and the prosecution history. But the second aspect could potentially apply whenever the asserted design patent appears to recite, in part, a “negative limitation”. This second part might impact jury instructions, as well as the way a case is argued to the finder of fact. It could also impact a pre-suit opinion of counsel analysis. Both factors might come up as part of dismissal, summary judgment, judgment on the pleadings, and/or JMOL motions, as well as in appeals.

January 2022

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Tags Design Patents, Litigation