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A Fresh Perspective on Design Patents

by Bruce A. Kugler and Craig W. Mueller

This article provides a synopsis of design patents and their relation with other forms of intellectual property. Proving design patent infringement recently has become less difficult than in the past. Thus, it is likely that inventors and companies will more readily consider design patents to protect their intellectual property.

ecently, in Egyptian Goddess v. Swisa,1 the U.S. Court of Appeals for the Federal Circuit (CAFC)2 in effect altered the way design patents are to be viewed as a tool to protect unique product designs. Prior to the Egyptian Goddess decision, a plaintiff had the burden of proving that: (1) to an ordinary observer, the product of an accused infringer was substantially similar to the claimed design;3 and (2) the accused product possessed substantially the same points of novelty that distinguished the patented design from the prior art.4 In Egyptian Goddess, the CAFC stated that the point of novelty test is inconsistent with precedent from various courts,5 in effect overruling those precedents.6 In so doing, the CAFC held that the ordinary observer test is the primary test for determining infringement of a design patent. However, the court stated that the test must be performed from the perspective of an ordinary observer who is familiar with the relevant prior art.7 In view of the Egyptian Goddess opinion, this article provides a new perspective on the applicability and usefulness of design patents to protect intellectual property, and how the burden of proof has shifted to now favor the patent holder.


more, the savvy practitioner often will use design patents, along with utility patents, trademarks, trade dress, and copyrights, to place a legal barrier or fence around his or her client's intellectual property. Although each of these legal vehicles are designed to protect specific aspects of intellectual property, some overlap often will occur, which can serve only to enhance overall protection of a client's invention.

Design Patent Protection Pre-Egyptian Goddess

Prior to Egyptian Goddess, the patentee had the burden of proving that the allegedly infringing product embodied the essence of the claimed design. As opposed to utility patents, which typically include multiple claims directed to one or more embodiments of an invention, design patents include a single design claim illustrated by a series of drawings that sufficiently define the claimed design. To prove infringement of a design patent, a patentee first would apply the ordinary observer test to prove that an accused product would confuse an ordinary observer.10 The standard was somewhat analogous to a likelihood of confusion test, a concept primarily related to trademark law. The ordinary observer test was first articulated by the Supreme Court in Gorham Co. v. White.11 There, the Court held that if a person "giving such attention as a purchaser usually gives" is deceived by one design into thinking it is another, the patented design is infringed by the other. In practice, the allegedly infringing product is placed in front of the trier of fact, along with the figures of the design patent for comparison.

Design Patents Generally

Design patents protect the ornamental or nonutilitarian features of an invention;8 that is, a design patent protects the appearance of a product, while a utility patent protects the way a product functions, is made, or is used.9 In many circumstances, it is possible and recommended to pursue both design and utility patents to properly protect all novel features of a novel product or device. Further-

About the Authors Coordinating Editors

Steven J. Merker, Denver, of Dorsey and Whitney LLP--(303) 629-3400, merker. [email protected]; William F. Vobach, Littleton, of Swanson & Bratschun, L.L.C.-- (303) 268-0066, [email protected] Bruce A. Kugler is a shareholder at Sheridan Ross [email protected] Craig W. Mueller is an associate at Sheridan Ross [email protected] The authors thank Lew Hansen, Robert Brunelli, and James Burke, all of Sheridan Ross PC, for their assistance.

Intellectual Property and Technology articles are sponsored by the CBA Intellectual Property and Technology Law and Policy Sections. They provide information of interest to intellectual property and technology attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.

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If the patent holder carried the burden of proving that an ordinary observer would mistake the design of the allegedly infringing product for the claimed design, the point of novelty test then was applied.The point of novelty test was first articulated in Sears, Roebuck & Co. v.Talge.12 It states, generally, that no matter how similar an accused design is to the claimed design, the accused device also must incorporate the features that made the patented design novel--that is, patentable.13 This means the patent holder must prove that the allegedly infringing product possessed the various points of novelty embodied in the figures. Accused infringers thus could knock off substantial portions of a claimed design and avoid infringement by omitting subtle features that arguably were the point of novelty. The test was burdensome to the patent holder, because an alleged infringing device could avoid infringement by merely eliminating a point of novelty while still meeting the ordinary observer test by incorporating the general ornamental shape of the claimed design. The CAFC closed this loophole in the Egyptian Goddess case. art reference (a fourth side without a buffing pad) and that Swisa's accused product did not include this point of novelty (it had a fourth side, but with a buffing pad), the court held that the patent was not infringed.

CAFC Opinion

In its en banc opinion, the CAFC noted that prior CAFC decisions held that the ordinary observer test alone is not enough to establish infringement, but also noted the difficulty of applying the point of novelty test, especially where numerous prior art references are involved.18 After a detailed review of these precedents, including the Supreme Court's decision in Smith v. Whitman Saddle Co.,19 the CAFC held that a secondary analysis or point of novelty analysis is legally inappropriate. The court seemed primarily concerned with a defendant's ability to avoid infringement and circumvent the purpose of design patent protection under the secondary test, especially where numerous points of novelty are involved in a design patent.20 Furthermore, the court was persuaded that the purposes of the secondary test could be satisfied by applying the "ordinary observer test through the eyes of an observer familiar with the prior art." 21 However, the court was careful to point out that the differences between the claimed design and prior art designs are not irrelevant. The court noted that these differences can be "an important component"of the analysis.22 Despite the detailed discussion of the appropriate test, the court ultimately held under the new standard that an ordinary observer and purchaser of nail buffers with knowledge of the prior art would not consider the four-sided buffer to be the same as the patented design and affirmed the judgment of noninfringement. Subsequently, a petition for rehearing en banc was denied.23

The Egyptian Goddess Case

On September 22, 2008, the CAFC released its en banc opinion regarding the point of novelty test in design patent infringement cases.14 The court held that the point of novelty test, as a freestanding test applied in addition to the traditional ordinary observer test, is inconsistent with precedent from various courts.15 The court held that the proper test for infringement of a design patent is solely the ordinary observer test, as performed from the perspective of an individual who is familiar with the prior art.16

Facts and Background

Egyptian Goddess brought an action for infringement of its design patent, which claimed a rectangular nail buffer with buffing surfaces on three of its four sides. The accused product, made by Swisa, was similar in almost all respects, except that it had buffing surfaces on all four sides. The U.S. District Court for the Northern District of Texas granted Swisa's motion for summary judgment of noninfringement.The court found that Egyptian Goddess failed to prove: (1) that the accused device was substantially similar to the claimed design under the ordinary observer test; and (2) that the accused device contained "substantially the same points of novelty that distinguished the patented design from the prior art." 17 The District Court limited its discussion on the second point to a single prior art reference that was similar to the claimed design, but triangular instead of rectangular in cross-section. In finding that the Egyptian Goddess patent contained only one element not found in the prior

Subsequent Case Law

Several district courts have applied the holding of Egyptian Goddess in design patent infringement cases. 24 For example, in Arc'Teryx Equip., Inc. v. Westcomb Outerwear, Inc., the U.S. District Court for the District of Utah employed the ordinary observer test as the sole test for infringement, and stated that construction of the design patent at issue is based on the drawings and ideally does not involve an attempt by the courts to provide a detailed verbal description of the claimed design.25 Following the Egyptian Goddess ruling, the court conducted its analysis from the viewpoint of an outdoor clothing customer who was "more discerning" than an average shopper--that is, the ordinary observer.26 Under this analysis and in view of the prior art, the court determined that the number, length, and placement of straight and diagonal sections of the zippers in question were adequate for the accused device to avoid the infringing device to find noninfringement.27 More recent, the U.S. District Court for the Southern District of Ohio, in Mondo Polymers Techs., Inc. v. Monroeville Indus. Moldings, Inc., declined to engage in claim construction of a design patent based on a detailed verbal description under its reading of Egyptian Goddess and Arc'Teryx.28 In Dexas Int'l, Patented Buffer Ltd. v. Office Max, Inc., the U.S. District

Prior Art

Swisa Buffer


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Court for the Eastern District of Texas followed the Egyptian Goddess holding by refusing to apply the points of novelty test and noting that the prior art was "particularly relevant to the ordinary observer analysis." 29 The court also stated that a detailed verbal description of the claimed invention was unnecessary.30

The Effect of Egyptian Goddess

The CAFC's holding in Egyptian Goddess has in effect broadened the protection afforded by issued design patents and the potential protection afforded by pending design U.S. Patent D513,715 Westcomb Outerwear's patent applications.This means that a patent to Arc'Teryx Equipment, Inc. Mirage Jacket holder need not prove that one or more points of novelty embodied in the claimed of infringement and will encourage an infringer to quickly settle. design have been incorporated into the product of the alleged inThe patent holder also can use his or her design patent to force the fringer. This increases the value of design patents, because the infringer to stop selling the infringing product, and can prevent inpatent holder no longer is required to prove that the allegedly infringing product from entering the United States.32 fringing device includes all of the points of novelty found in the Design patents can be used as a primary tool to protect intellecpatented design. tual property or to supplement protections already in place. The following discussion describes the relationship between design Primary or Supplemental Protection patent protection and other forms of intellectual property protecDesign patents are cost-effective deterrents to protect against tion. direct knockoffs. Design patents are narrow in scope and are wellsuited to protect the appearance of products that are apt to be copied. For example, unscrupulous vendors traditionally have used foreign manufacturers to copy luggage, purses, footwear, and other consumer products that are sold on the black market or at significant discounts.31 This practice often significantly reduces the value of legitimate products and tarnishes the reputation of the rightful manufacturer. Design patent protection for legitimate products is useful, because the cost of acquiring that protection is relatively low and direct copying of a legitimate product typically will result in a finding

Design Patent vs. Utility Patent

Utility patents protect an apparatus, method, process, or system.33 Conversely, design patents protect "any new, original and ornamental design for an article of manufacture." 34 Design patents cannot be used to protect the functional features of an apparatus and, as a result, there typically is little overlap between utility and design patent protection. However, both utility and design patent protection should be considered, especially if the outward appearance of the product that embodies the invention is sufficiently dis-

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tinctive that a potential infringer would copy and pass it off as his or her own. Furthermore, design patents are a useful and less expensive alternative to utility patents and may be an inventor's only available protection if the invention has no novel or nonobvious functional attributes. One difference between utility and design patents is the time period between the filing of the application and the issuance of the patent.35 In some instances, design patents may issue less than six months after filing. Conversely, depending on the nature of the invention, the U.S. Patent and Trademark Office (USPTO) may not examine a utility patent application for two or three years. Further, with utility patent applications, a great majority of the claims presented typically are rejected based on either a lack of novelty or obviousness, but design patent applications rarely are rejected unless a prior art design is almost identical. It is important to note, however, that design patent applications are subject to the same requirements of novelty and nonobviousness as are utility patent applications.36 Subsequent to Egyptian Goddess, manufacturers find it more difficult to design around a given design patent by simply changing certain minimal aspects of the claimed design. To evade a design patent, the differences between the product and the claimed design must be more than insignificant.37 Also, product copiers may not consider the existence of U.S. design patents because of their relative unpopularity compared to utility patents. Unlike utility patents, design patent applications are not published and remain secret until they are issued. Thus, a design patent application can be pending while infringers are marketing and selling prospectively infringing products; they will not be forced to cease their activity until the design patent is issued. Another difference between utility and design patents is their expense. Most of the cost of preparing a design patent application is incurred in connection with the preparation of drawings. Unlike utility patent applications, which may be filed with informal drawings, drawing requirements for a design patent application are more stringent.38 Design patent drawings must be formal and are strictly reviewed for compliance with the rules and, thus, should be prepared by a competent draftsperson.The USPTO fee for filing a design patent application is $460 for a large entity 39 and $230 for a small entity,40 compared to $1,090 and $545, respectively, for utility applications. Attorney fees associated with the preparation of each type of patent application also vary. The time it takes to prepare a design patent application for filing is a fraction of the time it takes to prepare a utility patent application. Finally, attorney fees associated with prosecution 41 generally are far less in the design patent application than they are in the utility patent application. Generally, a design application may be rejected by the USPTO as being indefinite where there will be an objection to some minor aspect of the drawings or specifications. Rarely, a rejection will be associated with novelty or obviousness of the claimed design.42 Further, if the design patent application figures show multiple versions--that is, "embodiments"of a device--a practitioner may be faced with a restriction requirement 43 where the examiner will require that one design be prosecuted.44 Conversely, utility patent applications often experience an arduous examination process where the USPTO rejects claims as being non-novel or obvious.45 Another difference between design and utility patents is cost of litigation.The cost of litigation of a utility patent may exceed seven figures due to expensive discovery, the necessity of experts dealing with complicated subject matter, and Markman hearings for a judicial determination of claim construction.46 With design patents, often the task of construing the claim--that is, interpreting the drawings--occurs fairly soon after filing of the infringement suit, and numerous depositions and expert opinions are not needed to interpret the drawings. Another notable difference between design patent infringement and utility patent infringement is the possible award of statutory damages, much like in copyrights.47 The patent law provides for disgorgement of an infringer's profits, not less than $250, whereas utility patents are confined to more conventional civil damage theories.48 Utility patent protection and design patent protection are related, each protecting different aspects of an invention. The law allows for such applications to be linked using continuation practice under 35 U.S.C. § 120.49 For example, in Racing Strollers, Inc. v. TRI Indus., the patentee successfully claimed the benefit of the filing date of parent utility application for a stroller for the continuation design patent on the design for a similar stroller.50 Continuity between patent applications allows the invention to be claimed in different ways in different applications while benefiting from the earliest filing date. Continuity practice has many benefits, such as maintaining a pending patent application, thereby keeping the patent holder's rights fluid and alive and providing a competitive advantage.

Design Patent vs. Trademark

Trademarks are used by consumers to identify the source or origin of associated goods and services. An important aspect of trademark law is the goal of protecting consumers so they are not misled from brands they prefer.51 Trademarks traditionally are thought of as two-dimensional logos, names, designs, or other indicia that convey the origin of a good or service.Three-dimensional product configurations, however, also may be protected under trademark; this is referred to as "trade dress." 52 Trade dress, such as the design or packaging of a product, may acquire a distinctiveness that serves to identify the manufacturer or source of a good.53 To obtain trade dress protection for product configurations, it is necessary to show that the design of the product at issue is inherently distinctive or has acquired secondary meaning.To prove infringement of a trademark, the trademark holder must prove that there is a likelihood of confusion between the protected and accused marks.54 "A product can be both patentable and protected by trademark rights as long as the particular design protected does not have a utilitarian function." 55 An example of a trademark is Coca-Cola ® 56 and an example of trade dress is the shape of the Coca-Cola bottle. The shape of a Coca-Cola bottle also could have been protected under a design patent. However, although a design patent lasts only fourteen years from the date of issuance, trade dress protection lasts indefinitely, as long as the owner of the mark is using it in interstate commerce. Thus, a product that is the subject of a design patent also may acquire distinctiveness in the marketplace, thus acquiring trade dress protection of the unique shape. It is important to note, however, that a trade dress cannot be functional and the existence of a utility patent that claims the features sought to be protected by trade dress is strong evidence that such features are functional.57 The existence of a design patent covering a product has been found to at least presumptively indicate nonfunctionality of the claimed design.58


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Thus, a way to supplement trademark protection for a product is to file a design patent application that covers the product.59 After the design patent is issued, the design patent holder would enjoy a fourteen-year monopoly to sell a product that embodied the claimed design. During the life of the design patent (or thereafter), if the design is popular enough to acquire distinctiveness, trade dress protection may be possible.60 Because it typically takes years for a design to acquire distinctiveness, having a design patent would protect the product long enough until acquired distinctiveness is obtained.61 For example, Apple, Inc. first obtained a design patent for its iPod ® media device, and then obtained a trademark registration for the same device.62 omitting nonessential elements, for example, or claiming different versions thereof.

Picture Claiming

The phrase "picture claim"with respect to utility patent applications means claiming the invention in significant detail, because a narrow claim is much more likely to be allowed. In the realm of design patent applications, picture claiming can have a similar meaning--figuratively describing an article in increased detail. This approach often is used if an applicant anticipates that competitors will copy the product in great detail. As described below, the claimed design may be broadened to prevent easy design-arounds, and applications covering designs of varying scopes may be concurrently pursued. Practitioners should discuss these issues with their clients and explain the advantages and disadvantages of providing extensive detail in their design patent drawings, because excessive detail could provide designaround options for competitors.

Design Patent Protection vs. Copyright

Copyright protection is the grant of a set of exclusive rights to the author of a creative work.63 Copyright law protects a creative expression of an idea, not the idea itself. Depending on when a copyright was filed for registration, it has a term of seventy years after the death of the copyright holder.64 Copyrights are familiar to most and are particularly well-suited to literary, musical, and visual works.65 Copyrights also may protect other works, such as architectural plans, building designs, and the like. Creative works integrated into functional devices--for example, a sculpture integrated into a lamp--have properly been the subject of both copyright and design patent protection.66 If the sole intrinsic function of an article is utility, however, the fact that it contains creative elements will not qualify it for copyright registration.67 Copyright holders may recover statutory damages for infringement that are greater than those recoverable for design patent infringement;68 however, copyright owners can recover such damages only if the effective date of registration is not later than three months after first publication or one month after notice of infringement, whichever is earlier.69 A copyright registration has the added benefit of being far less expensive and having a streamlined prosecution path when compared to design patents. Surface treatment is generally defined as "any indicia, contrasting color or materials, graphic representations, or other ornamentation" applied to a design.70 The drawings included in a design patent application may include surface treatment, but protection of surface treatment not integrated onto a design cannot be obtained with a design patent. Copyrightable works have been used as surface treatment associated with a design.71 Thus, a copyright holder may consider seeking protection for the ornamental shape of a product that incorporates copyrighted or copyrightable subject matter. For example, an ornamental shape of a snowboard may include artistic works such that the creator may seek dual protection. Similarly, a manufacturer who sells a uniquely designed product should consider seeking copyright protection in addition to design patent protection if the product will include a surface treatment of an artistic nature.

Broadening the Claim

One alternative to avoid adding unnecessary detail is the use of broken lines to convey environment.72 An example of "environment" would be a broken-line depiction of a portion of the design that is not intended to form part of the claimed invention.73 For example, a beer mug manufacturer can seek protection of a beer mug with a novel handle, where the depiction of the beer mug

Considerations and Strategies

Prior to preparing a design patent application, analysis is required so that the design is covered adequately and in various ways, with the goal of providing the applicant a wide net to ensnare potential infringers. This goal may be achieved by submitting various versions of the design to the USPTO by first depicting the design succinctly, then broadening the claimed design by

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would show all but the handle in broken lines. Thus, practitioners should strongly consider submitting figures that show the important ornamental portions of a product while omitting less-important and/or non-novel features, or showing them as environment to broaden the scope of protection. Features not critical to the overall appearance of a design may be removed in their entirety or shown by broken lines to capture the environment in which the design is used and not the entirety of the product being protected.74 Furthermore, features may be entirely omitted from the design patent application drawings to broaden the protection. The first figure presented below shows a microwavable container where the container end closure and removable lid are not positively claimed.75 The second figure shows an organizer that is attached to a vehicle seat, where the vehicle seat is not positively claimed.76 In each case, an infringer cannot escape liability merely by using the claimed design on a different device, or by adding features to the claimed design.77 signs will be in the public domain, unless a divisional application having the nonelected figures is filed. The benefit of filing an application with multiple embodiments is that many versions of the claimed design may be captured by one application. This single application would have a single filing, examination, search, and issue fee. Design patents, unlike utility patents, do not require a periodic maintenance fee to maintain.

Pitfalls of Claiming Too Much or Too Little

Prior to Egyptian Goddess, the problem with claiming a design too narrowly (for example, by presenting very detailed figures) is that, to prove infringement, the patent holder was required to show that the accused design not only was confusing to an ordinary observer, but also incorporated all of the points of novelty claimed in the design patent. In addition, if an application was too narrow, an alleged infringer could avoid damages by omitting one or a few of the points of novelty.Thus, to provide adequate coverage, an astute applicant prior to Egyptian Goddess was forced to file various versions of the design in various design patent applications, which could add significant cost. Subsequent to Egyptian Goddess, however, a design patent holder need not worry about an alleged infringer escaping the grasp of his or her patent by removing some innocuous points of novelty. The effect of Egyptian Goddess is that design patent protection has been broadened for patent holders, and the test for proving infringement has been relaxed.

Claiming Different Embodiments

The patent rules provide that a patent application may include multiple embodiments of a claimed invention or design.78 In the realm of utility patents, claims may be directed to an apparatus, a process, a method, a system, or another related apparatus. As long as the items claimed are related and do not pose a burden to the patent examiner, all claims will be examined.79 Alternatively, a design patent by definition possesses a single claim defined by at least one figure. However, a design patent application can include multiple embodiments if the designs presented are indistinct variants of each other.80 Thus, when filing a design patent application, the applicant should consider submitting very detailed figures along with broader versions. If the patent examiner believes these to be distinct variants of each other, he or she must elect a single design.Thereafter, the nonelected design may be pursued in a continuing application. One drawback of filing an application with multiple embodiments is the cost associated with preparing additional drawings. Furthermore, once the parent application issues, all nonelected de-


With the recent CAFC opinion of Egyptian Goddess, the ability to enforce design patents has been enhanced. To prove infringement, a patent holder must prove only that an ordinary observer familiar with the prior art would be misled.81 The relative ease of design patent application preparation and speed at which applications are prosecuted should make them very attractive to most inventors. Thus, design patents can be used either independently or in conjunction with utility patents, trade dress, and copyright protection to protect the novel attributes of products and provide a barrier to competitors.


1. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed.Cir. 2008). 2.The U.S. Court of Appeals for the Federal Circuit (CAFC) is the sole court of appeals for patent cases. The court's decisions are appealable to the U.S. Supreme Court. 3. Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1121-22 (Fed.Cir. 1998). 4. Id. 5. Egyptian Goddess, supra note 1 at 672. 6. See e.g., Goodyear Tire, Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed.Cir. 1984). 7. Egyptian Goddess, supra note 1 at 683. 8. 35 U.S.C. § 171. 9. 35 U.S.C. § 101. 10. Egyptian Goddess, supra note 1 at 670. 11. Gorham Co. v. White, 81 U.S. 511, 528 (1872). 12. Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944).

Microwavable container (closure and lid not positively claimed)

Vehicle organizer (vehicle seat not positively claimed)


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13. Egyptian Goddess, supra note 1 at 670. 14. Id. 15. Id. at 672. 16. Id. at 677-78. 17. Id. at 668. 18. Id. at 671. 19. Smith v. Whitman Saddle Co., 148 U.S. 674 (1893). 20. Egyptian Goddess, supra note 1 at 677. 21. Id. 22. Id. at 678. 23. Egyptian Goddess, Inc. v. Swisa, Inc., 2006-1562, 2008 U.S. App. LEXIS 25269 (Fed.Cir. Nov. 4, 2008). 24. Arc'Teryx Equip., Inc. v. Westcomb Outerwear, Inc., 2:07-CV-59, 2008 U.S. Dist. LEXIS 90228 at *3 (D.Utah Nov. 4, 2008). 25. Id. at *5.The technology involved a design for a curvilinear zipper. 26. Id. 27. Id. at *9. 28. Mondo Polymers Techs., Inc. v. Monroeville Indus. Moldings, Inc., 2:07cv-1054, 2009 U.S. Dist. LEXIS 9948 at *4 (S.D.Ohio Jan. 30, 2009). 29. Dexas Int'l, Ltd. v. Office Max, Inc., 6:07cv396, 2009 U.S. Dist. LEXIS 6642 at *14-15 (E.D.Tex. Jan. 30, 2009). 30. Id. at *20. 31. See Seizure Statistics FY 2008, available at Of the roughly $272 million of seized goods, 11 percent was attributed to handbags and similar items; 38 percent of that total was attributed to footwear. 32. Pursuant to 19 U.S.C. § 1337, the International Trade Commission (ITC) can exclude infringing goods from being imported into the United States. Similarly, intellectual property rights (for example, trademark, copyright, and ITC exclusion orders) can be recorded with the U.S. Customs and Border Patrol, which uses recordation information to actively monitor shipments and prevent the importation or exportation of infringing goods. See 33. 35 U.S.C. § 101. 34. 35 U.S.C. § 171; Manual of Patent Examining Procedure § 1502.01 (2009). 35. There is an average of 15.3 months for the 1,000 most recently issued design patents. Crouch,"Design Patents: Sailing Through the PTO" (April 2, 2009), available at 36. 35 U.S.C. § 171. 37. Sun Hill Indus. v. Easter Unlimited, 48 F.3d 1193, 1197 (Fed.Cir. 1995). See also Egyptian Goddess, supra note 1 at 677 (noting that the ordinary observer does not pose undue risk of assigning exaggerated importance to minor or insignificant features). 38. 37 C.F.R. § 1.83. 39. A large entity is anything that does not qualify for small entity status. See 35 U.S.C. § 171. 40. See Manual of Patent Examining Procedure, supra note 34 at § 509.02 (defining "small entity"as any small business concern as defined under § 3 of the Small Business Act). 41. For example, reviewing and responding to U.S. Patent and Trademark Office actions, i.e., assertions that the claimed invention or design is unpatentable. 42. Approximately 26 percent of the 1,000 most recently issued design patents received an initial rejection during prosecution. In addition, approximately 4 percent of design applications received a final office action. Crouch, supra note 35. 43. Manual of Patent Examining Procedure, supra note 34 at § 1504.05. 44. One pitfall to be aware of is double patenting. The U.S. Code allows for an inventor to obtain a single patent for an invention. 35 U.S.C. §§ 101 and 121. Courts have stripped an inventor of all patent rights, both utility and design, for violating this section. More specific, in Phizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1363 (Fed.Cir. 2008), a patentee was stripped of its rights under double patenting because the patent in question did not issue from a divisional application and claims were not patentably distinct from another invention. 45. More than 80 percent of utility patent applications initially are rejected during prosecution. Crouch, supra note 35. 46. Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir. 1995). 47. 35 U.S.C. § 289. 48. 35 U.S.C. § 284. 49. See, e.g., Racing Strollers, Inc. v. TRI Indus., 878 F.2d 1418 (Fed.Cir. 1989). 50. Id. 51. Two Pesos v. Taco Cabana, 505 U.S. 763, 784 (1992). 52. See TrafFix Devices v. Mktg. Displays, 532 U.S. 23, 28-29 (2001). 53. Id. 54. 15 U.S.C. § 1114. 55. Topps Co. v. Gerrit J. Verburg Co., 41 U.S.P.Q.2D 1412 (S.D.N.Y. Dec. 13, 1996). 56. See, e.g., U.S.Trademark Registration No. 3,252,896. 57. TrafFix, supra note 52 at 29-30. 58. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1342 n.3 (C.C.P.A. 1982). 59. Unlike trademarks, patents must be applied for within a year of a product embodying the invention or design is sold or offered for sale. 35 U.S.C. § 102(b). 60. See, e.g., Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 216 (2000) (stating that in an infringement action for an unregistered trade dress, a product's design is only protectable on a showing of secondary meaning). 61. See, e.g., Orozco and Conoly, "Shape of Things to Come," Wall Street Journal R6 (May 12, 2008) (description of how Apple, Inc. protected the design of the iPod® by using design patents as a bridge to trademark protection). 62. See, e.g., U.S. Patent No. D580,953; U.S. Trademark Registration No. 3,365,816. 63. 35 U.S.C. § 106. 64. 35 U.S.C. §§ 301 et seq. 65. 35 U.S.C. § 102. 66. Mazer v. Stein, 347 U.S. 201, 217 (1954) (stating that "[n]either the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted"). 67. Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890, 892 (9th Cir. 1983). 68. 35 U.S.C. §§ 501 et seq. 69. 35 U.S.C. § 412. 70. Manual of Patent Examining Procedure, supra note 34 at § 1503.02. 71. In re Daniels, 144 F.3d 1452 (Fed.Cir. 1998). 72. Manual of Patent Examining Procedure, supra note 34 at § 1503.02 (specifying that "broken lines" may not be used to depict less important aspects of the design). 73. Id. 74. Many foreign jurisdictions, including Canada, do not allow this practice. 75. U.S. Patent No. D510024, assigned to Ball Corporation. 76. U.S. Patent No. D425,474, assigned to Case Logic, Inc. 77. Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1482 (Fed.Cir. 1984). See also U.S. Design Patent Application Serial No. 611,034 (where the patent holder claimed a shank portion of a drill); In re Zahn, 617 F.2d 261, 268 (C.C.P.A. 1980) (the court found this acceptable and held that the statute was not limited to designs for completed articles, but simply the design for an article). In these instances, environment also may be used to show the remainder of the article being sold. 78. Manual of Patent Examining Procedure, supra note 34 at § 1504.01(b). 79. Id. at § 707.07(g)(B) (allowing for limiting actions to a particular issue when there is an undue multiplicity of claims). 80. Id. at § 1504.01(b). 81. Egyptian Goddess, supra note 1 at 676.

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| July 2009 | Vol. 38, No. 7




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