“Aber ist es Kunst?”

That question—“But is it art?”—was before the German Bundesgerichtshof (“BGH”), or Federal Court of Justice, in a recent proceeding involving the well-known Birkenstock sandal design. Birkenstock Group (“Birkenstock”) had sought relief against three rival sandal makers, asserting that the defendants’ products infringed Birkenstock’s copyright on its sandal design. Exemplary designs at issue are shown below.

Continue Reading German Birkenstock Decision Shows the Limits of Copyright Protection for Functional Designs

Design patents in the U.S. typically include two types of shading. The first and most common type of shading used in U.S. design patents is opaque shading, which illustrates a non-transparent or non-translucent surface of an article of manufacture. The second type of shading used in U.S. design patents is oblique shading, which illustrates a transparent or translucent surface of an article of manufacture. Specifically, MPEP § 1503.02(II) states that “[o]blique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror.” Therefore, if the article of manufacture is intended to have some level of transparency or translucency, the USPTO requires that oblique shading be used. 

Continue Reading Best Practices for Protecting Transparent and Translucent Designs

When there are fewer design elements in a design claim or when the individual elements of the design seem commonplace in isolation, it can be easy to overlook the inventive effort that went into developing a design. Rather than looking to the overall visual impression that those design elements provide as a whole, one can make the fatal error of ignoring a majority or the entirety of the design, considering it to be no more than an “abstract idea.”

Continue Reading Sometimes Less is More: Patentability of “Simple” Designs

Like many patent owners or aspiring patent owners, at some point you may have found yourself in a situation where design protection was needed, but all you had was narrow utility protection. Perhaps a decision had been made years ago to forgo a design filing in favor of a utility application, and in retrospect, that decision was a costly mistake. Sure, your disclosure may have been robust and your drawings comprehensive, but the available claim scope is not as broad as you would like, and now a competitor is selling a product that looks a lot like your product but does not infringe any of your utility claims.

Continue Reading While There is an Active Utility Application, There is Design Hope

The Manual of Patent Examining Procedure (“MPEP”) is the examination manual used internally at the United States Patent & Trademark Office (“USPTO”) to guide examiners in the process of examining patent applications. In practice, patent applicants frequently rely on the contents of the MPEP during patent prosecution to guide their arguments and hold examiners accountable to their legal obligations during patent examination.

Continue Reading Recent Examination Manual Update Includes Guidance on Protection of Computer-Generated Designs

While obtaining a design patent is often quicker than obtaining a utility patent, current design patent application pendency is often still a lengthy period of time. Based on data released by the USPTO in July 2024 and shown below, over the previous year the average length of time from a design application filing date to the date that a first Office action was mailed was 16.7 months (Figure 1, below). In the month of July 2024, that average had crept up to 17.1 months. In the consumer product space especially, given the sometimes short shelf-life of a product, such a long examination pendency may not be suitable for a design patent applicant.

Continue Reading Rocket Docket: Fast Track to Examination

As commerce moves more and more online, companies are facing unique challenges with respect to protecting their products, and the low cost of entry for online sellers has contributed to proliferations of knock-off and potentially counterfeit products being sold. This is particularly true when the product being sold is a simple disposable or replaceable product, such as a refill cartridge, a duster refill or a coffee pod.

Continue Reading Indispensable Strategies for Protecting Disposable Products

In the world of furniture design, aesthetics often play as crucial a role as functionality since the unique appearance of a furniture piece can set it apart in a competitive marketplace and help establish a brand’s identity. Fortunately, design patents are uniquely suited to protect the visual innovation embedded in furniture designs, and can help to safeguard company investment in the creation of unique offerings.

While utility patent applications may be used to protect functional aspects of furniture, design patents are the preferred method to protect any unique and ornamental visual qualities of these products, including any particular shape or configuration, surface ornamentation, or a combination thereof. That is, design patents focus on how a product looks, for example, the ornamental design of a headboard or footboard of a bed. In an industry where design is paramount, having a unique design that is protected, preferably with a multi-variate or iterative design patent thicket, can provide offensive and defensive support against competitors who might try to copy the design. However, building these design patent portfolios in a cost effective and efficient manner requires a thoughtful strategy and must be implemented as early as possible once the design of the furniture piece has been finalized.

As in other industries, furniture companies often rely on distinct designs to build their brand identity, and a series of design patents directed to a particular piece can create a patent thicket surrounding a recognizable product line that consumers may associate with a specific brand. For example, a bedframe has several core components, including a headboard and a footboard, and while a design patent directed to the entire bed frame does provide value against copying the entire look and feel, portion claiming through one or more design patent filings can protect core design features in a targeted fashion. An example is shown directly below, where only a portion of the headboard is claimed, which can be leveraged against design imitators that only attempt to imitate the aspects shown in solid lines in the design drawings.

FIGS, 1 and 9 of U.S. Design Patent No. D893232 for a “Bed Frame”

The example above provides an illustration of how a portion design claim can be leveraged to protect the unique curvature of a bed’s headboard, which can be juxtaposed with the example provided directly below, where the entire headboard and the entire footboard are claimed in solid lines. Both strategies provide value, and implementing such strategies for the same bed frame design can help to build a thicket of design patents that may cause competitors to think twice before entering the market with a similar looking bed frame and can certainly be leveraged in combination in any dispute against the competitor.

FIG. 1 of U.S. Design Patent No. D479056 for a “Bed”

Furthermore, and as shown above, design patents can be particularly effective at protecting unique visual elements of furniture pieces, such as detailed engravings, patterns, or artistic motifs that, in limited circumstances, can later develop into trademarks that serve as a source identifier for a particular brand. Such trade dress or trademark protection can be difficult to obtain, but once secured, can be a powerful weapon against competitors for as long as the mark is used in commerce. 

Finally, in a previous post, we discussed a decision by the Review Board of the United States Copyright Office that reversed a prior refusal to register a copyright for the artistic elements of a bed. While that decision demonstrated that copyright protection can be obtained for aspects of furniture in certain circumstances, design patents certainly provide much more complete protection for the overall ornamental design of furniture items, and are the preferred vehicle for protection of any such product. 

The Quarles design rights legal team is nationally recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page. To subscribe to our mailing list and receive updates that highlight issues currently affect the design rights legal field, click here. 

As outlined in our previous post, partial design claiming in China continues to be a moving target, as variations in the interpretation of partial design claims persist among Chinese examiners. As of this writing, the Chinese National Intellectual Property Administration (CNIPA) has still not yet released formal guidelines or recommendations detailing partial claiming that is and is not acceptable after partial claiming in Chinese design patents became permitted on June 1, 2021. Still, trends have begun to emerge in some aspects of partial claim interpretation with respect to design titles, independent and complete design units, surface indicia and patterns, dividing lines, and simple geometric shapes. This post provides an update regarding the interpretation of independent and complete design units for partial design claims and offers guidance for protecting articles of varying sizes. 

Continue Reading The Moving Target of “Complete Design Units” in Chinese Law