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“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 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

Upending decades of continuity in the world of design patents, the United States Court of Appeals for the Federal Circuit (“CAFC”), sitting en banc in LKQ Corporation v. GM Global Technology Operations LLC, overturned the Rosen/Durling standard for obviousness of design patents, originally set forth in In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982) and further refined in Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), to align the test for obviousness for design patents with the U.S. Supreme Court precedent for utility patents originally set forth in Graham v. John Deere Co., 383 U.S. 1 (1966) and refined in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).  In so doing, the CAFC outlined the new framework by which design patent obviousness is to be determined at the United States Patent & Trademark Office (“USPTO”) during examination and post-grant proceedings, as well as during district court litigation involving infringement or invalidity challenges of design patents.Continue Reading R.I.P. Mr. Rosen: Federal Circuit Upends Longstanding Design Patent Obviousness Test

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