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 Invention Secrecy Act: The USPTO as a Gatekeeper of National Security

The United States Patent and Trademark Office (“USPTO”) has the privilege of reviewing hundreds of thousands of inventions each year before the public learns about them. Consequently, the USPTO is uniquely positioned as a funnel through which the Government can collect information about new technologies and determine which ones have implications for the safety and welfare of the nation. Under the Invention Secrecy Act, the Commissioner for Patents may order that an invention for which patent protection is sought be kept secret if disclosure of the invention might be detrimental to national security. In order for the USPTO to review patent applications and then to do its part in protecting national security, while respecting the rights of inventors, the Invention Secrecy Act provides for the implementation of a framework with three primary components: (1) the screening phase, which applies to all patent applications; (2) the maintenance of secrecy phase, which applies to those inventions for which the Government has made a determination of risk to national security; and (3) the compensation phase, which is the phase during which a patent applicant or patentee can request compensation for either or both the loss due to being required to keep the invention secret and the government’s use of the invention prior to issuance of the patent. Failure of inventors to abide by the terms of and to follow the procedures promulgated under the Invention Secrecy Act can have dire consequences, and thus, applicants and persons who counsel them should be aware of its contours, how the USPTO implements it, and how courts interpret it

The Trademark Disclaimer Provision of the Lanham Act: Is USPTO Flexibility Worth Litigant Ambiguity?, 17 J. Marshall Rev. Intell. Prop. L. 305 (2018)

Most trademark applicants and the attorneys who counsel them are familiar with the requirement that they disclaim terms within their trademarks because those terms are descriptive or generic. The United States Patent and Trademark Office’s authority to direct applicants to disclaim terms is codified in the Trademark Disclaimer Provision of the Lanham Act, which provides examiners with a great deal of discretion. The same provision has been interpreted as providing applicants with the options of: taking conflicting positions, e.g., that the term is neither descriptive nor generic in the context of their marks, when asserting common law rights; and pursuing rights without disclaiming the term when there has been a showing of secondary meaning. But for all of the ease of implementation and application, now, more than half of a century since codification of the Trademark Disclaimer Provision, one should consider whether it is worth the effort and ask: Does anyone gain by allowing examiners to require that applicants disclaim generic and descriptive portions of their marks

Fifth Avenue and the Patent Lawyer: Strategies for Using Design Patents to Increase the Value of Fashion and Luxury Goods Companies, 5 J. Marshall Rev. Intell. Prop. L. 40 (2005)

Design patents occupy a peculiar niche in intellectual property law. For instance, they are different from copyrights in that an accused infringer has no defense of independent creation, different from utility patents in that there is no prerequisite of a useful function, and different from trade dress in that there is no issue of secondary meaning. Design patents also contain only one claim, which makes the applicant’s drafting task particularly challenging—she must strike a delicate balance between claiming broad protection and establishing novelty. Furthermore, in litigation, the design patent plaintiff must satisfy two tests of infringement: the ordinary observer and point of novelty tests. This article provides an overview of important aspects of design patent prosecution and litigation that will enable an attorney to increase the value of a client’s creative designs

Guest Artist Series:Stephanie Rea, Flute Scott Locke, Clarinet Richard Scott, Piano

Kemp Recital Hall Sunday Evening October 16, 2005 7:00p.m