The Eye Alone Is the Judge: Images and Design Patents

Design patents are an area of intellectual property law focused entirely on the visual, unlike copyright, patent, trademark, trade secret, or the various sui generis protections that have occasionally been enacted for specific types of innovation. Judges and lawyers in general are highly uncomfortable with images, yet design patents force direct legal engagement with images. This short piece offers an outsider’s view of what design patent law has to say about the use of images as legal tools, why tests for design patent infringement are likely to stay unsatisfactory, and what lessons other fields of intellectual property, specifically copyright, might take from design patent

Using Valuation-Based Decision Making to Increase the Efficiency of China\u27s Patent Subsidy Strategies

[Excerpt] “The Chinese government has grown concerned that its patent fee subsidy programs have not funded the most deserving patents, and thus they no longer wish to spend public resources to promote low-value patents. Instead, the government would prefer subsidy programs that encourage the most deserving patents. The Patent Strategy reflects this desire, as the fourth strategic focus of the Patent Strategy recognizes the need to “[o]ptimize [China’s] patent subsidy policy and further define the orientation to enhance patent quality.”19 This Article explains how a disciplined and transparent valuation-based decision making process can help the Chinese government design patent fee subsidy programs that allocate funds more consistently to deserving patents. In addition, this Article offers the outline of a practical valuation model the Chinese government could use to filter patent fee subsidy requests.

Innovation through pertinent patents research based on physical phenomena involved

One can find innovative solutions to complex industrial problems by looking for knowledge in patents. Traditional search using keywords in databases of patents has been widely used. Currently, different computational methods that limit human intervention have been developed. We aim to define a method to improve the search for relevant patents in order to solve industrial problems and specifically to deduce evolution opportunities. The non-automatic, semi-automatic, and automatic search methods use keywords. For a detailed keyword search, we propose as a basis the functional decomposition and the analysis of the physical phenomena involved in the achievement of the function to fulfill. The search for solutions to design a bi-phasic separator in deep offshore shows the method presented in this paper

Egyptian Goddess, Inc. v. Swisa, Inc.: A Dramatic Change in the Law of Design Patents?

[Excerpt] “On September 22, 2008, the Federal Circuit, sitting en banc, handed down the most important decision in design patent law in nearly twenty-five years. Egyptian Goddess, Inc. v. Swisa, Inc. (Egyptian Goddess III) abolished the point-of-novelty test first set out in Sears, Roebuck & Co. v. Talge and adopted by the Federal Circuit in Litton Systems, Inc. v. Whirlpool Corp. The point-of novelty test required patent holders to prove that an accused design appropriated the element which sets the patented design apart from the prior art—in addition to the ordinary-observer standard’s requirement of having substantially the same appearance—in order to prove infringement. The point-of-novelty test proved difficult to apply and often rendered valid design patents unenforceable. Additionally, the test had no basis in Supreme Court precedent. In place of the rigid point-of novelty test, the Federal Circuit announced a more malleable ordinary-observer standard that gives factfinders more leeway in evaluating infringement. Egyptian Goddess has been hailed as a major victory for owners of design patents, but this Note argues that the actual effect will be much more muted. After giving an overview of design patents, this Note will analyze the cases that preceded the Federal Circuit’s adoption of the point-of-novelty test in Litton Systems. Additionally, this Note will discuss some of the cases decided during the reign of the point-of novelty test to demonstrate the problems inherent in it. After covering Egyptian Goddess in depth, the Note will then argue that Egyptian Goddess’s effect will be limited.

EU Patent System: to be or not to be?

This paper introduce a list of desirable efficiency properties that any a patent system should have in order to enhance innovation, trade competitiveness, employment mobility and economic growth. We briefly overview the literature on patents and discuss the advantages and disadvantages of the present and recent proposals for the future of the European Union Patents System. In particular, we discuss the costinefficiencies observed in the current design of the EU Patent System based in a double structure layer divided in a central European Patent Office (EPO) and several nationalbased patent offices. This paper analyzes the likely backlashes of creating a third layer for a subâ€sample of EU countries. The paper suggests an alternative more efficient Patent System together with some policy implications.Innovation, Patents, Knowledge spillovers, Common European patent, Welfare losses, Patents’ languages, Cultural proximity, Competitive trade

A Trademark Justification for Design Patent Rights

This article presents a new set of empirical results to support the theoretical construct that design patents fill a gap in trade dress law protection. Based on the data, I tentatively reject the oft-stated conventional wisdom that design patents are worthless for many because procurement is too slow, expensive, and difficult. Rather, based on a first-of-its-kind analysis of the prosecution history files of a large sample of recently issued design patents, I conclude that the current design patent examination system operates as a de facto registration system. Notably, more than ninety-eight percent (98%) of the patents in my study were issued without the Patent Office challenging their inventiveness. The dramatic rise in the number of design patents being issued indicates that designers find value in design patent protection, and a study of parallel design patent and trade dress litigation suggests that design patents are serving as a back-up or replacement for trade dress rights

Virtual Designs

Industrial design is migrating to the virtual world, and the design patent system is migrating with it. The U.S. Patent and Trademark Office (USPTO) has already granted several thousand design patents on virtual designs, patents that cover the designs of graphical user interfaces for smartphones, tablets, and other products, as well as the designs of icons or other artifacts of various virtual environments. Many more such design patent applications are pending; in fact, U.S. design patent applications for virtual designs represent one of the fastest growing forms of design subject matter at the USPTO. Our project is the first comprehensive analysis of design patent protection for virtual designs. We first take up the question of virtual designs as design patent-eligible subject matter, a question that has not yet been tested in the courts. We show that longstanding principles of design patent jurisprudence supply an answer to the question, with surprisingly little need for adaptation. We then present the results of an empirical study analyzing all issued U.S. design patents on virtual designs and their prosecution histories. Here we show how utility patent metrics for quality and value can be extended to design patents. Using these metrics, we show that design patents on virtual designs fare at least as well in quality and value as do design patents on other types of designs. In fact, design patents on virtual designs fare better in some respects. And, finally, we conclude by identifying issues that are likely to arise in anticipated future litigation over patents on virtual designs

Whole Designs

In the past decade, there has been a renewed interest in the concept of patentable subject matter-that is, what kinds of things can you get a patent for? But this attention has, to date, been focused on utility patents, the patents that protect how things work. There has been scant attention paid to statutory subject matter and design patents, the patents that protect how things look. These patents have gained prominence in both practice and scholarship since the $1 billion verdict in Apple v. Samsung. The time has come to take the question of design patentable subject matter seriously. Today, the USPTO allows applicants to claim any visual characteristic of an article as a separate design, including small, immaterial, or functional fragments of an article. This Article argues that design patents should only be granted for whole designs-whole shapes, surface designs, or combinations-for articles of manufacture. This approach would better match the statutory text, allow for the development of intellectually coherent design patent doctrines, and better promote the progress of the decorative arts. It would also help define a clear domain for design patents to better channel designs among intellectual-property regimes

Design Patent Litigation: Is Obvious to Try Unavailable for Validity Challenges Under 35 U.S.C. § 103?, 16 J. Marshall Rev. Intell. Prop. L. 173 (2017)

Ten years ago, the United States Supreme Court shook the foundation of U.S. patent law when it announced that a patented invention could be invalidated because the claimed combination of heightened the thr whether a person of ordinary skill in the art would deem a combination of features obvious to try can be measured against a perceived a likelihood of success for achieving a purpose. But the concept does not easily translate to design patents. Those types of patents are directed to ornamental features, which by definition cannot be dictated by functionality, and thus, the success of a combination cannot be measured on an objective scale. This imperfect fit between design patents position on if and how to apply it in the context of design patents. This article provides an overview of how courts have applied the test of nonstandard, and practice tips for litigants who wish to challenge or are met with challenges over the validity of design patents

The Constitutionality of Design Patents

Design patents have been part of American law since 1842. In that time, only just over 600,000 design patents have been issued, with more than half of these being granted in the last twenty years. This quantity is dramatically fewer than the number of utility patents issued which is rapidly approaching 9,000,000 issued patents. Possibly because of the low usage of design patents over time, no case law and little literature address the constitutional issues raised by them. This article intends to overcome that shortcoming. Two constitutional aspects of design patents will be examined. First, congressional authority to adopt the design patent laws will be examined. The Constitution in Article I, Section 8, Clause 8 grants Congress specific powers to adopt both patents and copyrights. When a design is examined, it is unclear that it is an invention making its patentability suspect. At the same time, establishing a design as a writing is not problematic, leading to its eligibility for copyright. In this case, the clause itself must be examined to determine if something that qualifies only for copyright protection can nevertheless be granted a patent. The words chosen in the clause, particularly based on the way some of them were used in the Eighteenth Century, suggest that the answer is “no.” Of course, any historical analysis of the Constitution may prove to be an inaccurate predictor of how modern courts would address an issue, but this analysis does suggest a significant Article I problem for design patents. Second, even if the Article I problem can be overcome, serious First Amendment issues are raised. Unlike a utility patent, design patents are far more likely to have direct impacts on speech. If so, the patent laws would have to accommodate that speech unless there is a compelling governmental need for it to not do so. Copyright law, for example, avoids much of this First Amendment conflict through the recognition of the Fair Use Defense under 17 U.S.C. § 107 which allow society to use copyrighted materials despite the legal protection where important First Amendment issues are raised. Patent law has no such defense, but may need one to avoid constitutional problems