(Slide 1) Thank you to the IP Forum for having all of the speakers here who I got a chance to meet. I think we’re all in for a treat, because they are really excellent
speakers. My name is Chris Carani. I’m with the law firm McAndrews Held and Malloy Ltd. We’re an I.P. boutique firm in Chicago. We have about 105 attorneys practicing
in various areas of Patent Law, Trademark and Copyright Law.

What I would like to speak about today is “U.S. Design Patent Protection”. This particular topic has become increasingly more important. I know we perhaps have
quite a few trademark attorneys. There is quite a bit of association between Trade Dress Law and Deign Patent Law.

One thing you’ll note – I know we very much have an international audience here – in the U.S. we consider them ‘Design Patents’; many other countries they are ‘Design Registrations’,
‘Industrial Designs’. But here in the U.S. it’s actually a ‘Design Patent’ so it falls underneath the gambit of 35 U.S. C., which is the federal statute that sets forth our patent law.

(Slide 2) Today’s
discussion on design law is particularly timely, inasmuch as Mr. Francis Gurry
- who is a director general at WIPO – declared 2011 ‘the Year of Design’. I was
recently in Geneva
for the S.C.T. and we were working on a harmonized industrial design law. One
of the things that are on the front burner is the ‘Hague Agreement’ which maybe
many of you do already use. From a U.S.
perspective, the Hague Agreement has been ratified, by the United States,
but it has yet to be implemented. From some of my conversations with some of
the people inside the Beltway in Washington,
I understand that the next priority after patent reform is finalized – which
hopefully will be very shortly – will be implementation of the Hague Agreement.
And, that is directly from David Kappos, the director at the USPTO. He is very
keen on designs, having served as the liaison for the American Intellectual
Property Law Association Industrial Design Committee for the last 8 years. He’s
very well in tuned with Design Patent Protection and its importance. So, these
are some of the reasons that I think the discussion is timely and important.

(Slides 3-4) So,
what are we talking about when we are talking about designs? It’s all around
us. We see these types of imageries where you can see on the bottom row some of
the more authentic designs; on the top row you see more of the knock-off
designs. Interestingly, in all of these situations, the logo, or the trademark,
has not been appropriated. It is the appearance of the design that has been
appropriated. In the furniture world, we are very accustomed to seeing these
types of knock-offs.

(Slide 5) To
set everybody’s focus here – in the U.S. there are 3 ways to protect an
appearance: trade-dress, copyright, and, on the top you see design patent. Each
has their own requirements. We’re going to focus today on design patents.

One way to
think about a trade-dress – is to think of things that are iconic or things
that have developed a secondary meaning i.e. developed the customer association
either by inherent distinctiveness or by secondary meaning. Copyright is
typically reserved more artistic endeavours. In the U.S. we have a “useful article”
exception which prevents the protection of these designs through copyright.

Thus, design
patent is really the only game in town for a large majority of these items. It
is important to know about design patents, because when we’re talking about
protecting an item – if you’re foreclosed from trade dress protection (say for
instance you have issues with functionality, or if you have issues with
distinctiveness) you can’t go there. Also, with copyright, if you have what is
deemed to be a “useful article,” you can’t go there. With these two options
foreclosed, a designer is left with design patents. These are just some other
examples, in order to hammer home the differences between these 3 particular
areas, I have set forth some examples.

(Slide 6) You
can see trade dress on the lower left with a Tizio lamp and a Bellini chair (My
heritage is Italian-American, so any opportunities to talk about Italian design
I will, so I ask that you kindly indulge me). The Tizio lamp and the Bellini
chair have reached iconic status, and thus these designs can satisfy the
secondary meaning requirement needed for trade dress protection. But it’s
important to note that with respect to these two items, you could also protect
them with design patents. One of the strategies that we often employ is to
first get your design patent protection because you don’t have to have a design
product in commerce to get design patent protection, whereas trade dress you do
- you have to develop that customer association with the distinctiveness. So,
in the U.S. one of the strategies often employed, is secure your design patent
protection out of the gate, you clear the field, because there will be less
noise in the market place, and it will be easier for you to attach that
consumer identification with your product (i.e. “secondary meaning”). So, if I
get the design patent, and after 5 years of use, I can have a presumption of
trade dress, and you could even apply for your trade dress registration.   Thus, it is seen that there is an advantage
to acquiring design patent protection in order to help trade dress protection
attach to a product design.

(Slide 7)
As far as a roadmap, I’ll talk about some of the fundamentals of U.S. design
patent protection and then I want to give you the 4 most valuable ways to
achieve meaningful design patent protection. I underscore meaningful because I
think very often, people when they think about design patents think ‘design
patents are not worth the paper they are written on.’ Indeed, when I was
speaking at the Neocon trade show last year somebody asked, ‘Mr. Carani, what
do you think of the “4 change rule?”’ I said, ‘What are you talking about?’ He
said, ‘With the design patent, you only have to change 4 things and you can
avoid design patent infringement.’ You know, these are the types of rules of
thumb that are circulating out there, but those are of course a falsehood
because we are looking at the overall appearance, irrespective as to whether or
not you change some of the minutia. The concept here is whether or not it is
the overall impression of the design – that’s what we are talking about
protecting.

(Slide Moving
on, why this is so timely, in the EU, China,
the US
– the amounts of design registrations and applications are sky rocketing. The
reasons why are quite simple. I think that customers are placing more emphasis
on design, and the more that you invest in design the more companies want to
protect their designs. There is also insidious reasons, namely the many more
knock-offs these days. And then the last reason is more a legal point, as a
Supreme Court commentary. In the U.S., the 2 supreme court cases ‘Traffix’
decision’ and ‘Wal-Mart’ decision’ back in the early 2000’s severely curtailed
the availability of trade dress protection further making design patents the
only game in town.

(Slide 9) Here
are some recent examples of design patent infringement awards, just to show
that design patents do actually get litigated and you can obtain judgments and
money damages from them. But, in each one of these instances, you’ll note that
I list not just a dollar amount but also an injunction. Often times you catch
design patent infringement at the outset of the infringement, typically once
the product hits the market.  In these
instances, while the money damages might be little, the injunction is what is
most valuable to the client. Not only can you secure a permanent injunction, but
also a preliminary injunction.

(Slide 10) Refocusing
ourselves on design patents – underneath the larger umbrella of “patents” you
have “utility patents” and “design patents” – the basic difference is that a
design patent protects the way something looks, while a utility patent protects
the way something works.

(Slide 11) Here’s
an example of a case I worked on with utility patents for the Motorola Razor
phone that covered how it worked – the utilitarian aspects. There are several
of those, but there’s also several design patents on the outer shell of the
Motorola Razor phone – covering how it looks. So, that is the fundamental
differences.  Design patents and utility
patents are not mutually exclusive. You often have both types of patents
directed at a single product, albeit covering different qualities of the
product; indeed you can have trade dress protection, design patents, utility
patents, even in some situations copyright on the same product. To have an
effective IP strategy, you need to consider all options, which requires
considering IP in a comprehensive manner.

(Slide 12):
Hard Facts on Design Patents:

• One claim per design – so this is a little
  different from particularly, people coming out of European Community
  designs where you can file multiple designs in the application. In the U.S., you
  are only allowed one design, but as I’ll talk about later – you can file
  multiple embodiments per claim.
• Term commences 14 years from issuance – note
  that the term of a design patent is pegged off of issuance, not from
  filing.
• No maintenance fees –There are no
  maintenance fees (or annuities) for designs in the U.S., only
  a one-time issue fee.
• The average time of issuance is 9-12 months – (Slide 12-15) for many people with registration systems, this
  time frame seems like an eternity. They are trying to pull down that time
  period, for instance, here’s an example where using the rocket docket you
  can apply for these expedited procedures. Here’s less than 6 months, the
  recent one, less than 4 months from filing to issuance. So, the are ways
  in which to file these things where you can get them examined in a much
  quicker time, and notice I said ‘examined’. Once again, this is one of the
  main differences between the U.S. system and most other
  countries in the world have registration systems. We have an examination
  system, where we’ll be looking for novelty; the examiners at the USPTO
  will testing the design patent application for novelty, non-obviousness,
  and ornamentality.

So
what do design patents protect?

(Slides
16-18) They protect the shape, surface ornamentation,
colour, and a combination of those 3 things. Protecting all three aspects,
perhaps in separate applications, is strategic way to capture the synergies of
design patents.

Turning
to Slide 19, the statutory requirements for a design patent are novelty,
non-obviousness, and ornamentality. Novelty simply means new. Non-obvious asks
whether an ordinary person skilled in the art would think that the difference
between the prior art and the claimed design was non-obvious. The last
requirement is that the design must be ornamental.

Ornamentality
is the one requirement that I think trips up most people.   It is where a lot of people wrongly dismiss
or discard design patent protection.  At
least from the U.S.
perspective, in the law schools they teach and introduce the issue of
“functionality” (the inverse of ornamentality) through trade dress law , and
even through copyright law with the “useful article” exception.  Because these other laws have such a strict
functionality requirement, many people erroneously conclude “No, you can’t
get a design patent, because it’s functional.” They wrongly conclude that
design patents are left for only ornamental vases, flowery wood-work or
something like that. But, the reality is that almost everything has a function,
but still is considered ornamental. “Ornamental” is an unfortunate choice of
word in the statute. In fact, most industrial designers find the word
‘ornamental’ to be almost insulting, because they think of ornamental as just
adding some frills (a splash of colour here or there) to that the design. In
reality, some of the best design is that which integrates function and
form.  Think of Apple’s iPad, iPhone and
iPod.

(Slide
20) Looking at the slides, these are all issued design
patents. The test for ornamentality is simply, ‘Are there any design choices?’
Is there anything in the design where a design choice as to appearance was
made? An example of a case where it was found that there wasn’t a design choice
in the design, and it’s the only Federal Circuit case that I know of where
there wasn’t at least some design choice found, is the Best-Lock case that
regarded a key-blade.  (Slide 23) The
reasoning in this case was that the key-blade had to fit a keyhole, thus the
designer didn’t perform any designing; the form was strictly dictated to by its
function.

Turning
to Slide 22, I wanted to show you a real case addressing the issue of
functionality/ornamentality.  The design
in question regarded a drill bit, which unquestionably performs a function.
This slide is an example of how you can convince a judge, in the U.S. at least,
that despite the apparent function of the item, there are many possible
designs. Turning to slide, you can see that there are aspects of the design
which are arbitrary. By showing multiple alternate designs, you can increase
your chances of avoiding the invalidity issue of functionality/ornamentality .

Turning
to Slide 24, I will now address the issue of claiming colour and colour
combinations in design patents. Here are some examples of where colour
combinations have been successfully claimed.
e.g. Apple’s use of the colour combinations. But please keep in mind, if
you don’t specify a particular colour, you’re entitled to effectively a
“wildcard,” in other words any colour would fall within the scope there. Black
and white line drawings would cover an accused product, regardless of colour,
so long as the overall appearance of the accused design was substantially the
same as the patented design.

(Slide
25) Colour contrast – Even if you don’t specify a
particular colour, one can claim a colour contrast – for example a light colour
adjacent to a dark colour.

(Slides
26-27) This slide is intended to show you how a U.S. Design
Patent is laid out.  So if ever
you’ve seen a design patent – in short – you have a title, you have a claim, a
specification, and then the drawings. Effectively, the drawings are the
property line. There are no written descriptions; it’s just the pictures
typically from 7 octagonal views. In this particular design patent there were
just 6. But, you typically will see figures of plan views, elevation views, and
perspective views.

(Slide
28) So, now onto the 4 ways to secure meaningful design
patent protection. These particular claiming techniques are allowed in the U.S. I
know in many other countries, they are not allowed, so, you would have to
adjust your drafting techniques if you’re looking to protect a design globally.
For example, if you were first to file in the U.S. as your priority document, you
might want to file the second set of drawings that would be compliant with
another particular jurisdiction, so that you could access the earlier priority
date.

(Slide
28) So here’s 4 ways to increase the scope and the value
of design patents: First, I will discuss “broken lines,” which are the same as
“dotted lines,” and “phantom lines.” A little bit about why you would use
dotted lines.

(Slides
29-30) Here’s an example. A lot of these examples come from
the furniture world, which I’ve done a fair amount of work in. I think importing
some of the drafting conventions used in this particular industry to other
industries is something that’s been underused. So, for instance here, what is
being claimed is the top portion of the chair, the portion that’s in solids
lines, whereas the bottom portion of the chair, which is in dotted lines, is
not claimed, effectively creating a “wildcard.” So, for purposes of meeting
this claim, as long as you have the top portion of that chair, the claim will
be satisfied.  The design of the base
does not matter – any base will do. (e.g. 4 static legs, legs on rollers, 3
legs, or just 1 post, or maybe the seat could be the seat on an airplane or on
a bicycle, who knows?) It does not matter what’s on the bottom; it’s just
providing some type of environment, some type of context.

(Slide
30) Why would you do this? Let’s say a party just wanted
to copy the top; if the design patented was drafted in a way that depicted
everything in solid lines, the party could copy the top design exactly so long
as they incorporated a different base. If, however, the design patent dotted
out (i.e. disclaimed) the bottom portion, this easy design around would not be
available to a third party. The key here is to ferret out those particular
aspects of your design that you want to protect, and protect them to the
exclusion of other non-essential design elements. This strategy requires
protecting each aspect in a separate application.

(Slide
31) Here’s another example of a table where the feet and
hardware have been disclaimed (by use of “dotted lines”). By disclaiming
these features, it makes it more difficult to design around the “heart and
soul” of the claimed design.

(Slide
32) Here’s an example of a design patent directed at
footwear, where dotted lined have been used to focus on the critical aspect of
the design. The scope of this claim would cover any shoe, so long as it
incorporated the toe portion.

(Slide
33) As another practice point, please note that there is
no need to claim logos in your design patents. I see this a lot when I get
cases from foreign filers wanting to file in the U.S. Simply put, your
trademark rights will protect any infringement; there is no need to include it
in your design protection. Very often in non-counterfeit situations parties
might copy the design but change the logo.
With a different logo or no logo, it will only add to the party’s
non-infringement arguments.   There is no
need to assist the infringer with there (Slide 34 ) Another way to effectively
use dotted lines is to find a common thread that goes through several different
product offering. For instance, if you only claimed a side of a shoe, that same
design patent can be used to cover low-cut shoes, mid-cut shoe and high-cut
shoes.   In other words, 1 design patent
can be applicable to several product offerings.

(Slides
35-38) The next drafting technique that I want to bring to
your attention is using “Indeterminate Break-Lines.” This technique is
completely underused. It’s where you want to have flexibility in the coverage
for the aspect ratio of a particular design. Aspect ratio is the ratio between
length and width.  Turning to Slide _,
you can see indeterminate break-lines being used – here the sofa can be a love
seat or it can be sofa, it can expand.

(Slide
39) Here with respect to handles, or with respect to
towel racks, you don’t want to be limited to the particular aspect ratio,
therefore you can use these types of break lines.

(Slides
40-41) This is a figure from I design patent I filed, in
fact I was one of the named inventors on it. The indeterminate break lines are
used here to show radial expansions, not linear expansion as in the other
examples.  In another words, the back
plate in the design patent can decrease and increase in the size of its
diameter, and still be within the same type of claim.

(Slides
42-43) The third technique I would like to discuss is using
multiple embodiments. U.S.
design patent practice only allows one claim, but the USPTO will allow you to
file multiple embodiments, so long as the various embodiments form part of the
same distinct look.

(Slides
44-45) Here you can see that one embodiment with one leg,
and another with two legs – but, according to the Examiner on the case, the two
embodiments have appearance that are “patentably indistinct.”

(Slide
46) Here is another example of multiple embodiments.  It is a chair with some embodiments having
arms, some without arms, some with backs, some without backs – but all included
in a single claim. Again the key here is adding value to your design patents by
gaining scope. So you get away from this notion that design patents are so
narrow, and that they don’t have any teeth. Well, they can have teeth if you
take a learned, strategic approach using these concepts and these drafting
conventions.

(Slides
47-48) Also then one of the common approaches is with
respect to multiple applications -filed distinct applications under the
discreet novel valuable parts of your application. Don’t just file it on the
whole shoe; file one application on the sole (if you care about it), another
one on the upper sole.

(Slides
49-50) Through continuation practice, a lot of the time I
will file the first one in solid lines, and file continuation applications
systematically eliminating aspects. Maybe I just want to claim the top; maybe I
just want to claim the bottom; maybe I just want to claim two legs; maybe I
just want to claim a leg and a top. This is how you really create a sticky
situation for people who are trying to copy your clients’ products.

(Slide
51) Here is an example of Apple using many of these
techniques to create a synergistic effect.
With Apple you can see claimed the click wheel sometimes; the click
wheel and the screen; then maybe not the click wheel and the screen; then maybe
just the no screen. So you can see, you start using these permutations. You use
them altogether – you can start really creating some valuable protection here.

(Slide
52) The synergistic effect (this is a real world example)
with dotted lines, indeterminate break lines, multiple embodiments, another
application, multiple applications.  The
combination creates a powerful effect.

(Slide
53) The key here is be creative, be an abstractionist;
try to abstract out what is the key part of the design; what is your competitor
really going to try and copy out of your design?

Design Patent Enforcement

(Slide
54) What is the test for design patent infringement?

(Slides
55-58) Here’s the granddaddy of them all. This is the U.S.
case from 1871 which is still the law today and is cited on every design patent
case – Gorham v. White. I actually have both the Gorham spoon and the White
spoon in my office in Chicago.
So, this is the test: In the eye of an ordinary observer, two designs are
substantially the same – the first one’s infringed by the other. That’s it,
it’s simple. It’s substantial similarity, not identicality, not a blueprint,
but substantially similar. So what happened in Gorham? Let’s take a raise of
hands. Who thinks there was infringement? The patents on the left; the accused
designs on the right. Who thinks there is infringement? – I got one. Who thinks
it’s non-infringement? The final holding of the case was that there was
infringement. Maybe when you’re judging your own clients – is there
infringement in the U.S.?
Maybe take out these slides and say are we closer or further away from these 2
spoon handles.

(Slides
59-61) Bringing it up to the current date 2010, here’s the
famous Crocs footwear case – the design patent is on the left, and the accused
design is on the right. Was there infringement? The court held, yes,
infringement, despite the fact that they are noticeable differences in the hole
size, and in the shape and the placement.

(Slide
62.) And, finally, the remedies available in the United States
if there is a finding of design patent infringement:

• Loss profits
  (similar to utility patents)
• Reasonable
  royalty (similar to utility patents)
• Infringer’s
  profits (unique to design patents)
• Preliminary
  Injunctions, and,
• Permanent
  Injunctions

Questions:

• Question: There was a question inquiring as
  to whether there is a duty of disclosure required of applicants for design
  patents.
• Answer: Yes, if you are filing a design
  patent in the U.S., if you or the applicant know of any prior designs, in
  other words “prior art,” just like with a utility patent, you need to
  disclose that to the USPTO, or else the design patent can be held to be
  unenforceable due to the inequitable conduct. Thank you for the helpful
  comment.

Final Thoughts:

Design
law should be on everyone’s radar screen. If done right, design protection can
be effective, it can be quick, and actually can have some teeth.