Elizabeth Ferrill is a partner in the Washington, D.C. office of Finnegan LLP. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation, representing both design rights holders as well as and those accused of infringement. Beth also serves as one of the vice chairs of the Intellectual Property Owners Association Industrial Design Rights Committee.
For most people, what comes to mind when they hear the word “patent” might be an invention like the lightbulb—Thomas Edison’s version rather than Sawyer and Man’s, probably—or the telephone—another hotly-contested invention between Alexander Graham Bell and the lesser-known Elisha Gray….What the average person might not be aware of is the type of patent intended to protect “any new, original, and ornamental design for an article of manufacture.” This is the domain of the design patent…. Traditionally, design patents covered physical designs that had some tangible effect on the shape, or texture of the “article of manufacture.” Over time, design patent protection extended to cover screen layouts and graphical user interfaces (“GUIs”)…. Two recent cases are some of the rare examples of a company arguing infringement solely based on GUI design patents.
Yesterday, the Counterfeit Goods Seizure Act of 2019 was introduced in the U.S. Senate to empower U.S. Customs and Border Protection to enforce U.S. design patents at the U.S. border. The bill is co-sponsored by Senators Thom Tillis (R-NC), Chris Coons (D-DE), Bill Cassidy (R-LA), and Mazie Hirono (D-HI). Currently, Section 1595a(c)(2)(C) of Title 19 of the U.S. Code empowers Customs to enforce copyrights and trademarks that have been previously recorded with Customs. The bill proposes amending 19 U.S.C. § 1595a(c)(2)(C) to give Customs similar discretionary power to seize and detain imported goods that infringe a recorded U.S. design patent. The bill is publicly supported by Nike Inc. and the 3M Company, as well as the Intellectual Property Owners Association (IPO) and the American Intellectual Property Owners Association (AIPLA).