Posts Tagged: "design patents"

While we tend to think of Las Vegas’ tourism-based economy as built on gambling, trade shows also bring hundreds of thousands of visitors to the city each year. Thus, the issue of effective enforcement of the patent laws at these trade shows becomes entwined with the health of the city’s economy. Against this backdrop, the Las Vegas bench of the U.S. District Court for Nevada has developed a muscular set of equitable remedies for U.S. patent holders who complain to the court of patent infringement by a trade show exhibitor, remedies that the court can and does deploy with sufficient speed to be effective within the narrow timeframe of a trade show.

This years’ list of the top 50 companies having been granted design patents was dominated by technology, automotive, and consumer product companies, with foreign corporations representing more than 40% of the top 50 with a total of 20 companies. According to the IPO data, in 2014 the top 50 design patent recipients received a combined total of 4,743 design patents, compared to 4,599 granted to the top 50 recipients in 2013. Specifically, the growth in 2014 was just under an increase of 150 design patents that were granted in 2014 compared to an increase of nearly 400 that occurred year-to-year from 2012 to 2013. Despite the recent slowdown, however, the prospects remain strong for continued growth in design patent applications in the coming years, especially as innovators look toward design patents to strengthen their IP portfolios.

Damages for infringement of a design patent can be recovered for the greater of: (1) total profits from the infringer’s sales under 35 U.S.C. § 289, (2) damages in the form of the patentee’s lost profits or a reasonable royalty under § 284, or (3) $250 in statutory damages under § 289. Here, the Court held that the district court incorrectly instructed the jury to choose between awarding damages under § 284 or § 289. According to the Court, “[o]nly where § 289 damages are not sought, or are less than would be recoverable under § 284, is an award of § 284 damages appropriate.”

Apple v. Samsung is not over. Samsung has stated it is going to file a petition for certiorari later this year with the Supreme Court. In its petition, Samsung is likely to challenge, among other things, the Federal Circuit’s analysis of the district court’s claim construction and what these design patents truly cover. Samsung likely will also challenge the award of hundreds of millions of dollars (the total profits Samsung received on the phones found to be infringing). If the Supreme Court takes the case the Court will be presented with novel and important legal questions that may affect the damages award, both the underlying finding of liability and the proper measure of damages. Additionally, the foundation of Apple’s damages award is crumbling at the Patent Office, with one of the key design patents being rejected on multiple grounds.

In 2013, 647,300 industrial design registrations were filed – a 6.4% drop from 2012. The decline in global registrations stems primarily from the slow-down of Chinese manufacturing, which produced 12% fewer registrations than the previous year. After seven years of consecutive growth, 2013’s global registrations of 919,100 designs represents a 3.3% decrease from 2012. In 2013, upwards of three million industrial design registrations were in force.

Earlier this month the Central Reexamination Unit of the United States Patent and Trademark Office (USPTO) issued a non-final rejection of an Apple design patent at the center of their never-ending patent battle with Samsung. The patent in question – U.S. Design Patent D618,677 – covers the appearance of the surface of an electronic device. One new problem Apple now faces with respect to the ‘677 design patent is that the patent examiner has determined that the priority claim made in the patent “must be canceled.”

Ethicon sued Covidien in the Ohio district court for infringement of utility and design patents directed to ultrasonic surgical shear devices. The court granted Covidien’s motions for summary judgment, concluding that one patent was invalid as indefinite, that another patent was not infringed by Covidien’s products, and that several design patents were invalid as functional and were not infringed. Ethicon appealed the judgment to the Federal Circuit. The Federal Circuit reversed on indefiniteness, reversed the district court’s determination that Ethicon’s design patents were invalid as primarily functional, and vacated the summary judgment of non-infringement for a surgical shears patent.

Design patents are, in my opinion, an unfortunately overlooked patent. While a single design patent is a weak form of protection, they can be obtained quickly, rather inexpensively, and you can market the product using the terms “patented design” once a design patent has been obtained. Therefore, inventors and their representatives would do well to consider whether one or more design patents would be useful to supplement protection sought by a utility patent in order to facilitate a larger business strategy.

Last week I wrote about adopting a patent strategy in order to lay the foundation for success. What the article did not touch upon, however, is how you can use procedural mechanisms available at the Patent Office to expand your patent into a patent portfolio, or how to correct unforeseen problems with your patent (or portfolio) that may needlessly compromise…

Two independent errors warrant reversal, but to be fair, the district court did not have the benefit of the Supreme Court’s decision in Teva. Now, the Federal Circuit has the opportunity to address the interplay of Teva with claim construction in design patents. This is a much needed clarification.

The USPTO will soon publish the Final Rules governing processing and examination of international design applications filed pursuant to the Hague Agreement. The Agreement and the USPTO’s Final Rules are all expected to go into effect on May 13, 2015. U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term.

Unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. Simply stated, if you do not obtain a patent you have no exclusive rights. This is why inventors should never disclose their invention outside of a confidential relationship… Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights whatsoever. It is extremely important to keep detailed invention records in case you ever need to prove the particular date you invented… but keeping such records will never provide you any exclusive rights. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.