Posts Tagged: "design patents"

This week on IPWatchdog Unleashed, I sat down with my business and life partner, Renee Quinn. In addition to telling Renee’s story about how she found her way into the intellectual property world, and through our sometimes-comical banter, we together explore what it really takes to build, sustain, and continuously reinvent an entrepreneurial company like IPWatchdog. What emerged was a practical roadmap for entrepreneurship, invention, navigating platform risk, and focused on the necessity of constantly being ready to pivot as old business models start to show signs of age and ultimately falter. From Renee’s journey from IP outsider to patented inventor, to firsthand lessons learned navigating Amazon’s reseller ecosystem, the discussion highlights how intellectual property operates in the real world, not the classroom.

Recent cases involving design patents on appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) highlight significant developments and issues. There have been five decisions in 2025 and several more are anticipated. They address infringement, invalidity, estoppel, priority and Section 337’s Domestic Industry requirement. There is also developing jurisprudence on prior art for design patent infringement, as well as questions such as when are two designs plainly dissimilar, making their way through the courts.  

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday affirmed a district court’s finding on remand from an earlier CAFC decision that several hoverboard design patents were not infringed by hoverboard products sold online. The patents at issue are U.S. Patent Nos. D737,723 (“D’723 patent”), D738,256 (“D’256 patent”), D784,195 (“D’195 patent”), and D785,112 (“D’112 patent”). In 2022, in two separate precedential opinions, the Federal Circuit vacated two preliminary injunction orders granted by the U.S. District Court for the Northern District of Illinois against hoverboard products alleged to infringe four of Hangzhou Chic Intelligent Technology Co Ltd’s design patents.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday holding that the principles of prosecution history disclaimer apply to design patents, thus reversing a jury verdict that had found Top Brand LLC had infringed Cozy Comfort Company LLC’s trademarks and design patent. Cozy Comfort and Top Brand both manufacture “oversized hooded sweatshirts.” Cozy comfort owns U.S. Design Patent No. D859,788 (the “D788 patent”) and two trademarks for “THE COMFY” for goods and services relating to blanket throws. After Top Brand sought declaratory judgment of non-infringement from the U.S. District Court for the District of Arizona, Cozy Comfort counterclaimed for infringement of the patent and trademarks. A jury ultimately found Top Brand had infringed and the district court denied Top Brand’s motion for judgment as a matter of law (JMOL). 

Last week, fiberglass pool design company North Star Technology filed a combined petition  for panel rehearing and rehearing en banc at the U.S. Court of Appeals for the Federal Circuit to challenge that court’s decision this April affirming the Eastern District of Tennessee’s grant of summary judgment of noninfringement in a design patent case against Latham Pool Products. North Star’s petition argues that the appellate panel employed a “sufficiently distinct” test for infringement that lacks objective guardrails, inappropriate for the summary judgment posture of the appeal and similar to other areas of design patent law recently realigned with the utility patent context by the Federal Circuit.

The flexible approach of In re Maatita to definiteness embodies the idea that designs can be depicted in a variety of ways while still being reasonably understood by the ordinary observer. The standard also strikes a balance between allowing infringement and patentability to be assessed and allowing applicants to claim their design in the way that best reflects how that design is likely to be viewed in the real world, or focusing on what the applicant deems to be the most important aspects of their design. While an applicant may choose to claim three-dimensional aspects of design from one or more points of view, there is no requirement that every detail must be fully shown in multiple views from a variety of perspectives so that its three-dimensional nature can be exactly ascertained. But the Federal Circuit could not help but muddy the waters by providing its infamous teapot example.

In 2007, I began attending sessions of the World Intellectual Property Organization’s (WIPO’s) Standing Committee on Trademarks, Industrial Designs, and Geographical Indications (SCT) in Geneva, Switzerland, to discuss the development of the Design Law Treaty. I attended these yearly meetings typically on behalf of the International Association for the Protection of Intellectual Property (AIPPI), though occasionally as a representative of the American Intellectual Property Law Association (AIPLA). I was consistently intrigued by the opportunity to bring harmony to international design law—an area plagued by discord and confusion, including disagreement over the very terminology used to describe the right (e.g., design patent, industrial design, design registration, design model, aesthetic model, etc.).  Fast forward 17 years, and I found myself in Riyadh, Saudi Arabia, attending the final Diplomatic Conference for the Design Law Treaty.

A common question I get is “can I patent my website’s graphical user interface (GUI)?” (i.e. “Can I patent the look of my website or my App?”) The answer is yes, you can patent your GUI with a 15-year nonprovisional design patent. A design patent protects the novel visual appearance of the image(s) on your site. The patent examination rules refer to GUIs as “2D Computer-Generated Icons,” which may be §101  eligible subject matter if they conform with certain rules  (see: USPTO MPEP §1504.01(a) Computer-Generated Electronic Images).

Applications for design patents have surged in recent years, with the U.S. Patent and Trademark Office (USPTO) reporting a 20% increase in applications over the last five years. Design patents have become an important tool in brands’ intellectual property portfolios – and for good reason: where trade dress protection can take years (and significant resources) to acquire, with the right planning and timing, design patents are easy to obtain and offer strong protections for brands.

The full U.S. Court of Appeals for the Federal Circuit (CAFC)—minus Judges Newman and Cunningham—today overruled the so-called Rosen-Durling test for determining design patent obviousness, explaining that it has adopted “an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents.” The decision also said the Supreme Court’s precedent in KSR v. Teleflex favors a more flexible approach than Rosen-Durling.

On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument to reconsider the obviousness test for design patents. Overall, the many judges’ questions indicated a hesitancy to change the current law, as they expressed concern with positions advanced by the patent challenger. Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.

An en banc panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) today heard arguments from LKQ Corporation, the U.S. government and GM Global Technology Operations in a case that could change the test for assessing design patent obviousness. The judges seemed interested in tweaking the existing “Rosen-Durling” test but struggled with getting the parties to clearly articulate a replacement approach that wouldn’t be potentially just as bad. The so-called Rosen-Durling test for design patent obviousness requires that, first, under In re Rosen (C.C.P.A., 1982), courts identify a prior art reference “the design characteristics of which are basically the same as the claimed design.” Next, under Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir., 1996)), if such a reference is identified, the court must consider whether it can be modified based on other references to come up with “the same overall visual appearance as the claimed design.”

The number of design applications filed through the Hague System for the International Registration of Industrial Designs continues to grow, with an 18.8% increase in annual filings reported in 2022. The Hague system, which covers 96 countries, offers numerous advantages for applicants and presents some interesting strategic options for filing in the United States as well.

The U.S. Patent and Trademark Office (USPTO) today announced that a final rule will be published tomorrow, November 16, in the Federal Register implementing a design patent practitioner bar. The Office first published a Notice of Proposed Rulemaking (NPRM) to the Federal Register in May 2023 contemplating a separate design patent practitioner bar. A request for comments (RFC) was also published in October 22.