On Friday, I’ll be speaking at a Stanford Conference. The topic is the Quasi-Trademark Properties of Design Patent Protection. A recent lawsuit filed by Simply Orange Juice (Coca-Cola) is typical of the approach. SOJ’s design patent covers its recognizable orange juice bottle. These days, design patents are regularly obtained more easily, cheaper, and quicker than the accompanying trade dress registration. The design patent can then be used as evidence of non-functionality in the future trade dress proceedings. - The IP Dispute Resolution Blog (IP ADR) hosted “Blawg Review #171” with dozens of links to recent interesting IP articles. [LINK]
- Today’s Washington Post includes info on “A Junket that is Patently Enviable.” [An all expense paid trip to Copenhagen for PTO Officials and Congressional Staffers]
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Recent Patently-O Jobs:
- Patent Attorney – Small Corporation – Bellevue, Wash.
- Patent Associate/Agent – Law Firm – Washington D.C.
- Assistant/Associate Clinical Professor of Law – University of Connecticut – Hartford, Conn.
- Paralegal – Non-Profit – Seattle, Wash.
- Director of IP – Non-Profit – Menlo Park, Calif.
- Patent Attorneys – Law Firm – Dallas, Texas
- Associate Director, Assistant General Counsel-Patents – Large Corporation – Chicago, Ill.
- Patent Associate – Law Firm – Washington, D.C.
- Patent Counsel – Large Corporation – Sunnyvale, Calif.
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On Friday, I’ll be speaking at a Stanford Conference. The topic is the Quasi-Trademark Properties of Design Patent Protection. A recent lawsuit filed by Simply Orange Juice (Coca-Cola) is typical of the approach. SOJ’s design patent covers its recognizable orange juice bottle. These days, design patents are regularly obtained more easily, cheaper, and quicker than the accompanying trade dress registration. The design patent can then be used as evidence of non-functionality in the future trade dress proceedings.
Bill, it’s not just the design cases I’ve worked on that I worry about seeing here! Thankfully, Dennis hasn’t found mine yet! 😉
One of my biggest fears is that one day I’ll be reading Patently O and recognize a drawing from a patent application that I previously worked on. The above orange juice bottle drawing gave me a scare, but I didn’t work on that one. Phew!
So just to clarify matters for those of us who seldom do design work, an application’s title, description of the drawings (and whatever other text may be provided), and everything in broken lines are given no weight at all in determining what sort of prior art the examiner may fairly look to to come up with an anticipation argument, but some (or is it all?) of these things matter when the issue is obviousness?
“So under 103, you do ask whether a designer of bottles would be likely to look at comb designs in coming up with his new bottle design.”
It’s a friggin *design*. Designers can get ideas for designs from everywhere: at the beach, in the woods, at the museum of science and industry. Or in this case, the Chrysler Building.
Design patents: a universe where the stoopit truly reigns.
>>In this instance, was the examiner limited to considering profile curves on food containers? Containers that hold cleaning products? Combs? Toys? What about an industrial machine for manufacturing that sports a curve like that? How broad can you go?<< If the Examiner finds substantially the same curve in a comb, or whatever, it's a good 102 reference. If the same curve is not found in a single prior art reference, you're into 103 and the prior art must be analogous, in a design sense. So under 103, you do ask whether a designer of bottles would be likely to look at comb designs in coming up with his new bottle design.
Dennis,
Would you be able to post your slides and/or other presentation materials? It’s a subject of particular personal interest.
Thanks!
“… was the examiner limited to considering profile curves on food containers? Containers that hold cleaning products? Combs? Toys? What about an industrial machine for manufacturing that sports a curve like that? How broad can you go?”
Is someone likely to confuse an orange juice bottle with a comb?
Perhaps Malcolm thinks there is a “general understanding” about “examination”, that it achieves some sort of useful “filtering” effect, that the PTO performs on the arriving flow of sewage, before it is “duly issued” by the PTO, onto the heads of the waiting public.
Malcolm, exactly what do you mean that “there is no ‘examination’ of design patents as that term is generally understood?” It’s clearly not a registration system, and the prior art is indeed reviewed before allowance. The search tools available to examiners may be lacking (I know it’s a royal pain to search design marks on the trademark side), but that doesn’t mean there’s no examination.
“Whenever I see a design patent like this one, which seems to claim only a profile curve, I find myself wondering about the breadth of prior art available to the Examiner in conducting his examination.”
There is no “examination” of design patents, as that term is generally understood.
Never mind. Found it.
link to stanford.edu
Whenever I see a design patent like this one, which seems to claim only a profile curve, I find myself wondering about the breadth of prior art available to the Examiner in conducting his examination. In this instance, was the examiner limited to considering profile curves on food containers? Containers that hold cleaning products? Combs? Toys? What about an industrial machine for manufacturing that sports a curve like that? How broad can you go?
DC,
Could you post a link providing information about the Stanford Conference for those of us living in the neighborhood?
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