Publications 6 KEY TAKEAWAYS Must-Knows in Design Patents for Patent Professionals and In-House Counsel

26 September, 2022

Kilpatrick Townsend Partners Babak Kusha and Justin Eurek recently presented “Must-Knows in Design Patents for Patent Professionals and In-House Counsel” at the firms Kilpatrick Townsend Intellectual Property Seminar (KTIPS). KTIPS is an intensive, two-day patent strategy and protection seminar designed to provide insightful and in-depth training related to current developments in patent law, and how those impact patent procurement and enforcement strategies.

Below are key takeaways from their presentation.

1. Domestic US Designs:

  • Adjust the number of figures (e.g., perspective view) to aptly capture complex contours of a design being claimed – especially when you know you will be filing your design in a jurisdiction that does not allow shading (e.g., China).
  • Weigh the pros/cons of filing multiple embodiments carefully – more embodiments may cover more scope but run a higher risk of drawing a restriction requirement, which may necessitate subsequent DIV applications.
  • Avoid using photographs for a design patent – they are fraught with many pitfalls. If necessary for a last minute filing, file another application with properly formatted drawings as soon as possible. Though you may lose foreign priority, many foreign jurisdictions have a “grace” period, which leaves foreign filing options open in most of the major countries/regions even after a public disclosure.
  • Go BIG with GUIs – there is a lot of white space out there and very broad GUI designs can be captured. Use dashed lines liberally.
  • GUIs with highly data driven visualizations (e.g., stylistic graphs, charts, etc.) can be patented! What may seem like a narrow patent with unique, data-specific visualizations have two advantages – (1) they can be easier to get to allowance; and (2) allegedly infringing products can likely be loaded with data to create the same data-specific visualizations.

Front load filings with formatting to accommodate all target jurisdictions – this will ensure a 1-to-1 match for later foreign filed applications for a clean priority chain. You can subsequently and immediately file a preliminary amendment to pare down the set of figures to only those needed for US prosecution. This should be done immediately to avoid examination and complex restriction requirements.

2. China Designs:

  • China design patent term has increased from 10 years to 15 years from the date of filing.
  • Protection for partial designs is now allowed! Dashed lines can now be used.
  • NOTE: as of July 2022, no guidance has been provided to Chinese examiners on how to examine partial designs, so some push back and rejections may still occur during the transition.
  • Chinese-filed designs can now claim domestic priority to earlier filed Chinese designs. This is akin to a CON application in the US, with a six-month, post-filing window.

3. Design Patent Considerations:

  • IP creators should consider design patents as a way of extending their utility patent’s exclusive rights.
  • IP creators should consider design patents as a way of extending their brand protection.
  • Compared with Trade Dress: A design patent is not intended to identify source of goods.
  • An applicant can secure design patent protection even if the design does not mean anything yet in the minds of your potential customer.
  • An applicant can receive trade dress protection even if the design is not new.

For certain types of products, such as product configurations and packaging, parallel track protection is recommended, to secure a combination of design patents, trade dress and copyrights.

4. Design Patent Advantages:

  • Design patent protection offers advantages of lower cost and speed (no need to develop secondary meaning). However, to be entitled to design protection, the design must be new.
  • Design patents promote the opportunity to develop distinctiveness / secondary meaning.
  • Design patents do offer advantages for securing protection as compared to trademarks.
  • Enforcement advantages as compared to trademarks or copyrights.

5. Enforcement Options – Short of Filing a Complaint:

  • Platform–specific options (e.g., Amazon Procedure(s)).
  • Platform-specific process, can involve various levels of analysis/evaluations/ outcome/appeals.
    • Typical to obtain less than consistent results
    • Eventually may have to: write letter to the infringer; also consider other supply chain actors
  • Mapping and monitoring of IP rights for unauthorized copies.

6. Elements of a Good Notice Letter:

  • Recipient: confirm who, where and how, email, mail, UPS, etc.
  • Introduction: let them know who you are: attorneys representing______ .
  • What the issue is: our client makes _____.
  • Be specific with the notice: identify the product, the knock-off and the Patent No.
  • Begin with assumption of positive intent.
  • Be specific with the demands, be reasonable, be rational. e.g.:
    • Cease and desist from any and all infringing activity.
    • Identify the source of infringing products so that our client can address the issue with the supplier.
    • Dispose of related molds and any stock; and send evidence, such as pictures, of the disposal.
    • Within 15 business days, ship to______________ all stock of the products within your control and our client shall destroy all such stock.

For more information, please contact:
Babak Kusha, bkusha@kilpatricktownsend.com
Justin Eurek, jeurek@kilpatricktownsend.com