Patent marking involves indicating the patent number on a patented article, or in some limited instances on its packaging or a label. Marking can allow a patentee to recover pre-notice back damages. However, courts have said that marking is not required when a patent has only method claims. But this becomes a somewhat complicated question when a patent includes both method (or process) claims and apparatus (or system) claims. The Federal Circuit has created an unusual exception to the marking requirement based on which claims the patentee does and does not assert or which claims are or are not infringed. This article explores whether this Federal Circuit’s treatment makes sense or if it should be replaced by a different approach.
Federal Circuit Precedent
Patent marking requirements are established by statute. 35 U.S.C. § 287(a). They were first introduced in 1842 along with prohibitions on false marking, and the penalty was changed from a fine to a limitation on back damages in 1861. Such a limit on back damages for failure to mark has remained in place ever since. However, the Federal Circuit has ruled that if the patent is directed only to method (or process) claims, marking is not required. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed. Cir. 1983); accord ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1334-35 (Fed. Cir. 2012). But what if a patent has both method and apparatus claims?
In the Hanson case, the Federal Circuit considered marking obligations and the availability of back damages in a suit involving an asserted patent (U.S. Pat. No. 2,968,164) with both method and apparatus claims. Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075 (Fed. Cir. 1983). The decision said that while the “Hanson patent also includes apparatus claims. The only claims that were found infringed in this case, however, were claims 1, 2, and 6 of the Hanson patent, which are drawn to ‘[t]he method of forming, distributing and depositing snow upon a surface . . . .'” Id. at 1083. In a holding described as a “narrow one,” the lower court’s award of back damages was found to be not clearly erroneous and affirmed. Id. The court’s opinion was short and there was little explanation for the holding.
Later in Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., the Federal Circuit said that “[i]n Hanson, 718 F.2d at 1082-83, we held that 35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.” 559 F.3d 1308, 1310,1316 (Fed. Cir. 2009). “In this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and apparatus claims.” Id. at 1317.
The astute reader will notice that the Crown Packaging decision talks about “asserted” claims, whereas the Hanson decision had actually referred instead to “[t]he only claims that were found infringed . . . .” These are not always the same — one or more asserted claims might not be found to be infringed. And neither the Federal Circuit’s Hanson decision nor the prior Sixth Circuit decision on infringement (611 F.2d 156 (1979)) explicitly mentioned which claims were or were not asserted. In this respect, Crown Packaging misstates the holding of Hanson.
Asserted Claims and Infringement Contentions
Not discussed in any of these Federal Circuit decisions are the procedures through which particular claims are asserted in U.S. patent litigation. This actually varies somewhat between different trial courts. Yet the various procedural approaches all end up being fairly similar in the end.
Generally, a patentee will specify which particular claims are asserted against the accused infringer only sometime after a lawsuit is commenced. These are commonly referred to as infringement contentions. It is possible for a patentee to identify which particular claims are being asserted in the pleadings, that is, in a complaint or counterclaim. But that is not required and is not commonly done. Most typically, the pleadings will merely allege that one or more claims are infringed, and possibly detail how one example claim is alleged to be infringed, but without specifying exactly which claims are or are not infringed.
Some district courts have local patent rules that specify when infringement contentions must be made to specify which claims are being asserted — and by implication which claims are not being asserted. In other districts, individual judges may specify a deadline for infringement contentions in a case-specific scheduling order. If neither of those things happens, then the accused infringer will generally serve an interrogatory asking for infringement contentions.
Some judges or local rules will limit the number of claims that the patentee can assert. Sometimes this is referred to as selecting representative claims. This practice is not without controversy. But the Federal Circuit hasupheld such limitations under certain circumstances. Limits on the number of asserted claims might apply to infringement contentions from the start, or might be imposed later on as a requirement to reduce the number of asserted claims as trial approaches. There is considerable variation and discretion in how trial courts impose these limits, if at all.
The main thing to take away from this discussion of infringement contentions is that the patentee only specifies them after a lawsuit has commenced, and can select less than all claims.
Retroactive Changes to Marking Requirements?
Can a patentee retroactively eliminate the statutory marking requirement by electing to assert only method claims after a lawsuit has commenced? The Crown Packaging decision is phrased in such a way as to permit exactly this to happen. But another Federal Circuit decision expressly rejected the possibility of retroactively undoing marking requirements.
In Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., the Federal Circuit held that the patentee filing a statutory disclaimer of a selected claim eight days after commencement of litigation “cannot serve to retroactively dissolve the § 287(a) marking requirement for a patentee to collect pre-notice damages.” 853 F.3d 1370, 1382-84 (Fed. Cir. 2017). That conclusion was explained and justified in terms of the purpose of the statutory marking requirement. “The marking statute protects the public’s ability to exploit an unmarked product’s features without liability for damages until a patentee provides either constructive notice through marking or actual notice.” Id. at 1383. That purpose is undermined if the patentee can selectively eliminate the requirement retroactively.
The Rembrandt decision throws into relief how Crown Packaging and Hanson permit the marking requirement to be retroactively eliminated. This is more pronounced in the Crown Packaging decision, which emphasized which claims were “asserted”. The patentee makes decisions about infringement contentions for specific asserted claims after a lawsuit begins and, of course, after the marking requirement arises if patented articles were previously distributed. Although Rembrandt dealt with a statutory disclaimer, its reasoning still stands at odds with the holdings of Hanson and Crown Packaging.
The Hanson case offered essentially no rationale for its holding. That is, while Rembrandt explained how a retroactive elimination of the marking requirement was contrary to the well-established purpose of the marking requirement, Hanson did not meaningfully explain the purpose served by its contrary conclusion. Hanson‘s “narrow” holding is little more than a bare conclusion resting on a new judicially-created exception to statutory requirements. And Crown Packaging expanded upon that holding, relying mainly on a characterization of Hanson as binding precedent rather than attempting to supply a rationale absent from Hanson.
A Better Approach
In this author’s view, Rembrandt appropriately explains and relies upon the purpose of the statutory marking requirement. The largely unexplained contrary conclusions of Hanson and Crown Packaging undermine the purpose of the marking requirement to the detriment of the public and enable gamesmanship by patentees. The en banc Federal Circuit or Supreme Court should overturn Hanson and Crown Packaging. But what should be put in their place?
The marking requirement has long been understood as protecting the public. If the patentee fails to mark patented articles, the public can rely on a lack of marking to avoid liability. Indeed, the policy underlying the U.S. Constitution and federal statutes allows “free access to copy whatever the federal patent and copyright laws leave in the public domain.” Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237 (1964). The patent statues impose a penalty on a patentee who fails to mark patented articles, by limiting back damages. These basic, long-established principles should determine how marking requirements are interpreted for patents with both method and apparatus claims.
A better approach would be to determine if the patentee, or anyone acting for or under the patentee, has distributed articles that meet at least one apparatus claim of the asserted patent. If so, the marking requirement should apply to that patent as a whole. Under this proposed approach, the patent marking requirement arises even if only method claims (but not apparatus claims) were found to be infringed and even if the patentee elected to assert only method claims (but not apparatus claims). In essence, this approach looks only at whether there was a failure to mark patented articles and ignores method claims. Any failure to mark bars pre-notice damages.
Such an approach is consistent with the marking requirement being a burden on the patentee to inform the general public. Numerous past cases have emphasized how the marking requirement is the patentee’s burden and that circumstances regarding the infringer are irrelevant. Devices for Medicine, Inc. v. Boehl, 822 F.2d 1062, 1066 (Fed. Cir. 1987); Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994); Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). The public is still harmed by a lack of marking where the patentee later chooses to selectively assert only method claims or establishes only that method claims were infringed by one particular infringer. Under the proposed approach, the patentee is subject to the statutory penalty for the harm caused to the public. The statutory policy would therefore be better promoted.
Moreover, this proposed alternate standard aligns with the language of the statute. Section 287(a) says “in the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter . . . .” The statute refers to “any action for infringement”, without qualification. And it excuses a failure to mark only when the patentee provides actual notice to the infringer. The statute as a whole is exacting in its requirements and it explicitly provides only one exception. The proposed alternative approach thus aligns with the wording of the statue and avoids adding a further judicially-created exception.
This proposed approach also avoids the retroactivity problem and promotes predictability. Patent marking requirements are determined by actions of the patentee (and those operating for or under the patentee). The conduct of others, including which claims were or were not infringed (per Hanson) or the patentee’s actions after the start of litigation (per Crown Packaging) would no longer alter the consequences for the patentee’s failure to mark. The patentee’s prior conduct would determine whether or not back damages are available in any and all later actions.
January 2025
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.
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–Durlingframework 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). Afterall, 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
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.
In U.S. trademark law, use of a trademark matters a lot. Rights generally go to the “senior” user. That is whoever has earlier or prior use. This can mean that determining who is the senior user generally determines who has rights and who is an infringer. But what if a “junior” user has a federal trademark registration? Does a later trademark registration mean the registrant prevails over a prior user? Can a junior user’s registration be asserted against the senior user? Is the result the same even when the prior user never registered the trademark and only has “common law” rights?
Prior Use Prevails
Courts have said that a prior trademark user prevails over a later registration. However, prior use by one business followed by later federal registration by another sometimes leads to concurrent rights by multiple entities. How that works depends on the geographic scope of the senior user’s pre-registration use. For example, if the most senior user only uses a mark in a limited geographic area, a later user in a remote geographic area might obtain concurrent use rights in that particular area prior to the senior user obtaining a federal registration.
This happened in a famous case involving the mark BURGER KING for restaurant services. A party that began using the same mark in part of Illinois without knowledge of the senior party’s use elsewhere retained concurrent exclusive rights to continue use it in an area around one city, despite the senior party having previously used the mark in numerous other states and later federally registering it. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968).
Another case like this involved the mark OLD DUTCH for packaged pretzels. There, different parties had been using the same mark for the same goods in different parts of the country. One party (Dee Dee) was the first user in six states before the other party (Old Dutch Foods) obtained a federal registration. The later federal registration could not prevent concurrent use by the prior user Dee Dee in those six states. The court determined that each party was entitled to a concurrent use federal registration, each registration limited to particular geographic areas. Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150 (6th Cir. 1973).
There can even be situations in which a prior user’s rights encompass the entire country. In that situation, the later registrant can be prevented (enjoined) from using its registered mark anywhere in the country (even as a corporate trade name) and the later registration cancelled. Cuban Cigar Brands N.V. v. Upmann Int’l, Inc., 457 F. Supp. 1090, 199 USPQ 193 (S.D.N.Y. 1978), aff’d 607 F.2d 995 (2d Cir. 1979).
Incontestability Changes Nothing
Priority of use generally prevails even if the later registration becomes incontestable. Indeed Section 15 of the Lanham Act (15 U.S.C. § 1065) says:
“except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable . . . .”
As a court summarized the law this way. “The plain meaning of this language is that if a party has acquired common-law trademark rights continuing since before the publication of the federal registration, then to that extent the registration will not be incontestable” and “geographically defined areas of exclusive use are required for each party . . . .” Wrist-Rocket Mfg. Co., Inc. v. Saunders Archery Co., 578 F.2d 727, 731 (8th Cir. 1978).
Conclusion
Under U.S. trademark law, it matters who was first to use a trademark. Trademark rights arise from use. Even when there is a federal trademark registration, the registration must bow to prior use. That is to say that a registration does not trump prior use. Of course, unregistered common law trademark rights are limited only to the geographic markets in which prior use has occurred substantially consistently and continually.
However, the law can be different in other countries. Common law rights are not recognized in the same way in all countries. First-to-file trademark laws in many countries give rights to the first to register, regardless of others’ prior use. Although even in first-to-file regimes there might be limited prior use defenses available. These questions require legal review under the laws of each relevant country or jurisdiction.
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.
In the field of U.S. intellectual property (IP) law, there are often references to the Federal Circuit. What is the Federal Circuit? This brief article will explain it.
Overview
The United States Court of Appeals for the Federal Circuit, or “Federal Circuit” for short, is a U.S. Federal appeals court. It hears cases appealed from various places including U.S. federal district courts and certain Federal agencies including the U.S. Patent & Trademark Office (USPTO) and the International Trade Commission (ITC). It was created in 1982. It replaced and merged the prior U.S. Court of Customs and Patent Appeals and the appellate division of the U.S. Court of Claims, which no longer exist.
Jurisdiction
What makes the Federal Circuit rather unique is that it has exclusive subject matter jurisdiction for certain types of cases. (28 U.S.C. § 1295). In general, appeals in Federal cases are made to regional circuit courts. That is, federal appeals courts are mostly divided into geographic “circuits”. They hear appeals from lower (district) courts within their respective geographic areas. But, instead, the Federal Circuit hears appeals from any district court in the country relating to patents and certain other matters, as well as appeals from certain executive branch agencies.
In particular, the Federal Circuit has exclusive appellate jurisdiction over all U.S. federal cases involving patents, plant variety protection, trademark registrations, government contracts, veterans’ benefits, public safety officers’ benefits, federal employees’ benefits, and various other types of cases. Appeals involving Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) decisions and patent and trademark prosecution (that is, cases related to the examination and granting of patents and trademark registrations) all go to the Federal Circuit. There are some exceptions, however. Cases involving assignments of patents may go to a regional circuit court instead. Trademark infringement matters are appealed from district courts to regional circuits, not to the Federal Circuit.
Conclusion
Because of the number of patent and trademark cases it hears, and its exclusive jurisdiction over cases involving U.S. patent laws, the Federal Circuit is important to know about in order to understand IP law in the United States. Federal Circuit opinions and orders (i.e., decisions in individual cases) can be found here, or via proprietary case reporter publications and databases.
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.
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
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
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
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.
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 priorprecedentialcases 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 Hygienedecision 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 ethicsscandals 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
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.
These downloadable materials from a past live presentation address basic marking requirements and best practices for patent marking, as well as requirements for virtual marking, alternative marking on a label or package, ways the sufficiency of marking can be challenged, and false marking. These materials cover the ins and outs of patent marking in a format packed with real-world examples.
Marking is simple enough in concept but there are a surprising number of nuances and practical challenges for implementation. Also, the America Invents Act (AIA) reshaped numerous aspects of marking that continue to reverberate. For instance, virtual marking was introduced with the AIA and there is now a growing body of court decisions clarifying what kinds of virtual marking practices are sufficient and what kinds are not. These practical aspects of marking are addressed in these program materials.
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.
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 ColumbiaII 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). ColumbiaII’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) (9th 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. SeeSouth 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
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.
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.
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.
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.
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 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.
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.
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 usuallynot 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-yearterm 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.
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.
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.
Materials from a presentation by Austen Zuege and Jonathan Bench about patent assignments and rights of priority, including presentation slides and an on-demand video recording, are available here:
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.
Abstract: This article provides critical analysis of the doctrine of assignor estoppel for patent assignments following the Supreme Court’s Minerva v. Hologic decision, which limited the situations in which the doctrine is available to those that involve a “contradiction” by the assignor that violate norms of “fair dealing”. An overview of the likely abrogation of prior Federal Circuit cases is provided. Although, as explained, there are significant policy disputes that underlie the doctrine that have not been definitively resolved, which will undoubtedly be the subject of dispute in future cases. Also addressed, and questioned, are corollaries and related Federal Circuit precedents involving privity, the effect of purported assignments of future inventions and the role of claim construction to preserve validity defenses. For the latter, an “assignor estoppel donut” is conceptualized to highlight the multiple boundaries involved, of which Minerva’s holding addressed only one. Lastly, an analysis of pragmatic assignment scenarios and potential areas of dispute around them is set forth, in order to inform both assignment drafting and negotiation, on the one hand, and legal disputes over existing assignments, on the other.
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.
