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

As we’ve written about in prior posts, it’s possible under U.S. trademark law for distinctive visual element(s) to become a trademark, i.e., an identifier of source for a particular party’s goods or services.

Continue Reading The Blue Turf of Boise State: On “Service” Dress and the Creation of Source Identification

Last week, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the law on comparison prior art in design patent cases. In the decision, captioned Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, 21-2338 (Sept. 15, 2023), the Federal Circuit provided guidance on the types of prior art that can be reviewed by courts and juries in the comparative prior art stage of the infringement analysis of design patent cases.  In the initial case, Columbia Sportswear North America, Inc. (“Columbia”) sued Seirus Innovative Accessories, Inc. (“Seirus”) for infringing U.S. Design Patent No. D657,093 (“the D’093 Patent”) via sales of its products containing HeatWave™ liner material, as illustrated side-by-side below.

Continue Reading Design Patents are Heating Up at the Federal Circuit, Again

The recent proliferation of useful Artificial Intelligence (“AI”) tools for tasks like text, image, music, and software code generation is all the rage. In the intellectual property sphere, one of the hottest topics surrounding the use of these AI tools is whether the works of art or inventions (including works of industrial design) created using these tools can still be considered the creation of the individual author or designer. This question is of critical importance because the U.S. copyright and patent laws are currently written in a way that require human creation to be eligible for protection.

Continue Reading AI & IP: A Not-so-Perfect Pairing

In a surprising move, the Court of Appeals for the Federal Circuit (“CAFC”) has granted a petition for rehearing en banc on the issue of whether the test for determining obviousness of design patents has been overruled by the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007).  In the case, captioned LKQ Corp. et al v. GM Global Technology, the en banc CAFC has requested briefing as to whether the design patent obviousness test originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and blessed by the CAFC in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) is good law in view of the Supreme Court’s obviousness holding in KSR, which significantly modified the obviousness inquiry for utility patents.  While there was no doubt that KSR did not apply to design patents since the underlying obviousness analysis for utility patents differs so significantly from that for design patents, the en banc CAFC has clearly demonstrated a renewed interest in the issue, and any changes to the test can have significant implications for all future-filed, pending, and active design applications and patents. 

Continue Reading Uncertainty Ahead if Design Patent Obviousness Test is Abrogated by <em>en banc </em>CAFC

Quarles & Brady partner and editor-in-chief of the firm’s Protecting the Product design rights blog, James Aquilina, and patent engineer Harrison Powell attended the 16th Annual USPTO Design Day on May 4, 2023, in Alexandria, Virginia at the USPTO’s Headquarters.

There was a range of programming at Design Day, including remarks from Derrick Brent, Deputy Director of the United States Patent and Trademark Office and Karen Young, Director of TC 2900, who delivered the “State of the Design Technology Center.”  Further to high-ranking officials from the USPTO, there were a plurality other presentations and conversations amongst members of the design law community that included private practice prosecutors and litigators, in-house counsel, industrial designers, USPTO Examiners, and product design expert witnesses.

A few key takeaways from the programing include:

  • U.S. Design filings in FY 2021 up 17.6% over FY 2020;
  • “Rocket Docket” filings more than doubled from FY 2021 to FY 2022, from 4246 to 9899 filings;
  • The unexamined application inventory is declining but still near an all time high;
  • The USPTO has been actively recruiting Design Examiners and has increased the number of Examiners 67% between FY 2018 and FY 2022, from 178 to 294.

Beyond information on the current state of TC 2900, there were a range of topics discussed that included recent design patent appeal decisions such as Ideavillage Products Corp. v. Koninklijke Philips NV (PTAB October 25, 2022) and Ex parte Grede et al. (PTAB September 29, 2022), as well as major ongoing federal court litigation relating to design patent cases, such as LKQ Corp. et al. v. GM Global Technology Operations LLC.

REGISTRATION NOW OPEN – 16th Annual USPTO Design Day on May 4, 2023

Registration for the 16th Annual USPTO Design Day 2023 has been made available and interested parties can register virtually or in person here.

The 16th annual Design Day will be held on May 4, 2023, from 10 a.m.-5 p.m. ET, with options to attend either in-person at USPTO headquarters in Alexandria, Virginia or virtually. Participants will get insights from United States Patent and Trademark Office (USPTO) design examiners and managers, the Patent Trial and Appeal Board (PTAB), design patent practitioners, and more.

Quarles’ design patent attorneys have spoken at previous Design Days and will once again be in attendance at this year’s event.

This year’s event features:

  • Welcome remarks from Karen Young, Director of Technology Center 2900.
  • An update on international policy developments from Courtney Stopp of the USPTO’s Office of Policy and International Affairs.
  • Comments from Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.
  • Information about patent, trademark, and copyright protection systems from Damian Porcari, Director, Midwest Regional USPTO Office.
  • Much more!

Design Day is co-sponsored by American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners Association (IPO), and the USPTO.

The USPTO’s Trademark Trial and Appeal Board (“Board”) recently ordered the cancellation of two trademark registrations for product configurations of safety helmets, shown below and both directed to “… a three dimensional configuration of two ridges located along the center of a safety helmet….”

Continue Reading Safety Helmet Product Configuration Trademark Registrations Demolished by Lack of Evidence of Acquired Distinctiveness