Quarles & Brady Partner and editor-in-chief of the firm’s Protecting the Product design rights blog, James Aquilina, Partner Michael Piery, Associate Rachel Ackerman, and patent professionals Harrison Powell and Audrey Jacobson attended the 17th Annual USPTO Design Day on May 9, 2024 at the USPTO’s Headquarters in Alexandria, Virginia.

Continue Reading RECAP – 17th Annual USPTO Design Day

Over the past two decades, the World Intellectual Property Organization (WIPO) has been working on a Design Law Treaty focused on aligning examination and procedural guidelines associated with what have historically been referred to as “industrial designs.” One main goal of the Design Law Treaty is to help designers in domestic and foreign jurisdictions obtain design protection faster, easier, and cheaper. In theory, the Design Law Treaty would help to streamline the registration formalities in jurisdictions that are signatories to the treaty and reduce the amount of “red tape” that comes with obtaining design protection across different jurisdictions.

Continue Reading USPTO Request for Public Comments Regarding the WIPO Design Law Treaty

The beauty industry is ever changing, and makeup trends and viral product releases can drastically increase a company’s profits.  However, without proper legal protection, competitors can quickly replicate a product, eating into those profits. 

In this post, we will address how design patents and trade dress can be employed to provide protection for various beauty-related tools and products.

Continue Reading Protecting the Product: Beauty Products

As outlined in our previous post, securing a partial design claim in China is akin to hitting a moving target, as the interpretation of partial design claims in China has varied among cases and examiners.  Since the rule change allowing partial claiming for Chinese design patents took effect on June 1, 2021, the Chinese National Intellectual Property Administration (CNIPA) has still not yet released formal guidelines detailing what is and is not permitted.  However, certain patterns have emerged from the tranche of partial design claims that have been refused or allowed so far, especially regarding design titles, independent design units, patterns/surface indicia, unconnected claims, dividing lines, and simple geometric shapes.  From these patterns, there are several guideposts that applicants can use to navigate the uncertain waters of partial design claiming until a formal statement from the CNIPA is released.

Continue Reading The Moving Target of Partial Design Protection Under Chinese Law

As we have previously written about here, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has granted a petition for an en banc rehearing of LKQ Corp. et al v. GM Global Technology to rule on the issue of whether the current test for determining obviousness of design patents, i.e., the Rosen/Durling Standard, is proper in view of the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007), which significantly broadened the obviousness inquiry for utility patents beyond the classic Teaching Suggestion Motivation (“TSM”) test.  The Rosen/Durling Standard was originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and both upheld and further clarified by the Federal Circuit in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996).  The Standard first requires the identification of a proper primary or Rosen reference, which is “a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design’” and then the modification of the primary reference with a secondary reference. Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391). 

Continue Reading Design Patent Obviousness Inquiry Is Up for Review at the CAFC

The United States Patent and Trademark Office (“USPTO”) is amending the rules of practice in patent cases by creating a separate space for individuals with educational backgrounds in design-related disciplines to qualify to practice before the USPTO in the limited capacity of design patent application proceedings. This new rule does not impact those already registered to practice any patent matters before the USPTO. The USPTO, with this rule amendment, will now recognize applicants to the design patent bar that have degrees in any of industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, art teacher education, or a degree equivalent to one of the listed degrees. This list of educational backgrounds matches those sought out by the USPTO to fill out the ranks of the design patent examination corps.

Continue Reading New USPTO Design Patent “Bar” to be Created in 2024

As outlined in our previous post, on June 1, 2021 the Fourth Amendment to the Chinese Patent Law came into effect, allowing partial claiming in design patent applications.  Until this past May, examination of most Chinese partial claim design patent applications had been held up by the China National Intellectual Property Administration (“CNIPA”), since the CNIPA had not published formal Examination Guidelines for partial design claiming.  While formal Examination Guidelines have still not been published, the CNIPA has recently been issuing Office actions rejecting certain partial designs for failing to form a “relatively independent area” or a “relatively complete design unit” of a product.  Since unclaimed broken lines can only be converted to solid lines (and vice versa) within two months from the Chinese filing date, a rejection indicating that the design fails to form a relatively independent area or a relatively complete design unit on a product can possibly mature into an incurable defect.

Continue Reading Navigating Partial Design Rejections in China