In 2005, the PTO held a ceremony to commemorate the issuance of design patent number 500,000. The design patent went out to DaimlerChrysler for the design of the Chrysler Crossfire. Then Commerce Chief Gutierrez and PTO Director Dudas were on hand to note the importance of design patent design patents.
The patent has taken an interesting path – as shown by the assignment records at the PTO. Of course, DaimlerChrysler is gone, and Chrysler now owns the patent. In addition, Chrysler has given-up three separate security interests in the design patent. The first and second priority are apparently held in trust by the Wilmington Trust Company. The third priority is held by the US Department of Treasury based on a January 2009 grant and is apparently related to the company’s receipt of bailout money. [Assignment Data]. D500,000 is not the only patent implicated here – the assignment documents show that the US Treasury holds a security interest in more than 2,400 of Chrysler’s patents or pending applications. [More Assignment Data]
One important practice issue is raised: Absent a specific agreement, to what extent must the applicant consult secured creditors during the prosecution of a pending patent application?
IBP: I’m curious about the “no protection for technical features” point you mention above. I think it isn’t correct. Europe excludes:
“must fit” features, like USB plug shapes
“must match” features, like the edge of a font wing spare part for a car
features “not visible in use”, like a connecting rod in a piston engine
but otherwise functionality is no bar to registration unless no other the shape will work (like a drill bit).
Just look what sort of stuff is registered in Europe. Printer cartridges, the logo of the UK Institute of Trademark Attorneys, screen icons, etc etc.
The point about having a registration certificate is that your kicking foot has a boot on it. That might be enough, without having to take him to court. Maybe the infringer can relieve you of your boot. Then again, maybe not.
Results of quick internet search on european design protection, all from WIPO:
“An industrial design is the ornamental or aesthetic aspect of an article.” (like design patent)
“To be protected under most national laws, an industrial design must appeal to the eye. This means that an industrial design is primarily of an aesthetic nature, and does not protect any technical features of the article to which it is applied.” (like design patent)
“As a general rule, to be registrable, the design must be “new” or “original”. Different countries have varying definitions of such terms, as well as variations in the registration process itself. Generally, “new” means that no identical or very similar design is known to have existed before.” (novelty requirement)
Issues of novelty and ornamentality must be resolved in order to determine property rights. Maybe in europe the first time they are meaningfully addressed is in the conflict stage, sort of like copyright–in fact, WIPO states that “Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law. In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other.”
No greater social benefit is immediately apparent to me of a system that only begins the resolution of these issues once a conflict has arisen, versus one in which the registration has improved content and meaning.
I realize that I am assuming that design examination in the US is meaningful and substantive, something that I myself question–but I question that for utility patents as well. Maybe it is the case that it is not economically efficient to examine designs for ornamentality, novelty, etc. in the absence of a conflict–but it seems to me that even a cursory examination wrt novelty would be helpful, and that in the absence of ANY examination, there would be no non-arbitrary reason to place the burden of moving forward onto the non-registrant.
Of course, I know nothing of the european system of resolving such disputes, such as where the burdens lie, what presumptions exist, and what the procedure and remedies are.
Maybe Perry Saidman can comment on why a european-style registration system would be better, apart from harmonization concerns. I’m not certain, but isn’t there an AIPLA committee working toward a registration system?
Perry?
IBP here’s a thought. European politicians, labouring under the misapprehension that European design beats into a cocked hat the puny efforts of designers outside Europe, devised a pan-European regime of design protection that combined huge potency with trivial cost. Anybody from the IPR world could have told them that European innovation is largely ignorant of IPR and that the rest of the world would be the ones who would rush to Alicante and take out all the European design registrations. With some honourable exceptions, so it has proved. So, now, thanks to the efforts of well-meaning but naive and ignorant politicians, European industry has to navigate through a thicket of European design registrations in the hands of their Asian and American competitors. But wait, maybe all those registrations will turn out to be invalid, or of near-zero scope. Who knows? Procter & Gamble, I suspect.
When presented with questions about what exactly the european model is, what its differences are wrt the US design patent model, and why it would be any better than the US model, Max punted: “As I’m not an attorney at law, I will leave it to others…”
Any attorneys care to comment on the existence of european design validity, novelty, and rebuttable presumptions?
IBP, there seems to be no need to reply to your surmises about European Union law on design patents. What you haven’t already correctly worked out can be got from the text of the Regulation, available from OHIM, online. As I’m not an attorney at law, I will leave it to others to debate the meaning of a “rebuttable presumption” and whether the holder of a Certificate of Registration can invoke such a presumption, when that Certificate issued without all grounds of validity having first been examined prior to issue.
I’m “seriously interested” in your story, and in what IPR the European home furnishings manufacturers used, to block imports of products that were reproductions in material form of works of art created more than 50 years ago. Artistic copyright, I will assume. It does have a long term, doesn’t it?
Malcolm,
your “indisputable” is like 6’s grasp of legal logic – full of baby oil. Printed Matter Doctrine come to mind?
A request for a personal example of your great prosecutorial skill is hardly a drive-by inanity, unless your prosecutorial skills themselves are drive-by inanities, in which case your comment is self directed (but just not clear).
You’re welcome.
“patents and godly powers 11161345”
Thanks 6 … now we know who Malcolm is!
Hi Chris!
“you are an angry gay (bitterly partisan Democrat) man with a chip on your shoulder.”
False. I do not have a chip on my shoulder.
NAL “Malcolm, how is it that anyone who asks you to actually deliver on an argument is “a personal troll””
Define “anyone,” and please explain the basis for your question in light of the indisputable fact that I “deliver on my arguments” all the time and reserve remarks about “personal trolls” for the select few commenters who shout drive-by inanities at me.
Thanks.
I seem to remember that there was a relatively recent case which discussed the meaning of “integral” in a claim.
What was the name of the case? Thanks
“Oh, look, I have another personal troll.”
Malcolm, how is it that anyone who asks you to actually deliver on an argument is “a personal troll”, or a sockpuppet? It is ironic that you yourself are purported to be nothing but a sock puppet.
Personally, notwithstanding that I seriously doubt that you are a prosecutor, I couldn’t care less to see one of your “perfect prosecutions” simply based on the haphazard manner in which you present your arguments on this board and your tendency to run when your logic is shown to be baseless.
Someone recently posted that you are a fool provocateur – an apt observation, and a role you do serve, even in your deprecating manner. I also don’t care to know your political, religious or sexual leanings. I simply judge your “fool” level by your postings and think that that level has little to do with the other “leanings”.
“high school sophomore’s notebook”
Trolling the high schools now Mooney?
“another personal troll”
Yep, guess since Dennis is deleting the posts of anyone who disagrees with you, someone’s got to do it. You can’t stand on your own. Its kind of like socialism (being a Democrat), or communism (being a liberal Democrat). It has to be coerced, since it runs counter to the natural order of things.
Whoever, you are, you are an angry gay (bitterly partisan Democrat) man with a chip on your shoulder.
By the way Che Guevara’s mule called…again.
“Malcolm – still waiting for a single example of your perfect prosecution.”
Oh, look, I have another personal troll. Who is this time? Another obese Texas Republican with a litigious streak? Or just Caveman playing with a new URL and sockpuppet?
The right given by registration is a right to exclude. You get an injunction if, on the preponderance, the accused infringer is within the scope and can’t prove the thing to be invalid. Test for infringement (crude approximation): is the accused embodiment “closer” to the representations than the prior art. And as to yr 2nd para: Europe is effete, isn’t it? News to me that it is “vigorous” about anything. Can you tell me more about this vigour they are displaying?
Max–
“…a right to exclude.” Exclude someone from doing exactly what? Reproducing the appearance of something?
“…prove the thing to be invalid.” Does this mean that there is a presumption of validity, even though it is simply a registration system with no attendant examination?
“…’closer’ to the representations than the prior art.” Is this another way of saying that there is a novelty requirement?
If my translations above are appropriate, this is sounding a lot like a U.S. design patent–but I can’t see how you could rightly have a presumption of validity without examination, and even if you could, how that would benefit society more than does the U.S. system with even its possibly cursory examination. Seriously interested.
2nd para–E.U. home furnishings manufacturers blocking importation into E.U. of copies of famous designs that originated 50+ years ago.
Malcolm – still waiting for a single example of your perfect prosecution.
And, unlike PSA, Teaching, Suggestion, Motivation, TSM, can be explained in one sentence of 25 words or less.
Dear Max,
Re: “Wouldn’t it be nice to have a grand unifying theory of obviousness?”
We had one, “Teaching, Motivation or Suggestion, TSM,” which was based on some reasonable evidence to the contrary, until our Supreme Court mucked it up with KSR at the anonymous behest of Cisco and their ilk in the cartel known as the Coalition for Patent Fairness through their illegal lobbying and blasphemous “global-community-bulldung” propaganda.
I have some bottom, and I dam sure put a bit of stick about.
link to francisurquhart.blogspot.com
THE RT HON. FRANCIS URQUHART MP
You see, the trouble with politics today is that no one has any backbone. No one has any bottom, and no one is willing to put a bit of stick about.
link to francisurquhart.blogspot.com
THE RT HON. FRANCIS URQUHART MP
You see, the trouble with politics today is that no one has any backbone. No one has any bottom, and no one is willing to put a bit of stick about.
I think we are missing another issue altogether.
Is it good for the US gov’t to have such an interest in these patents? I know the gov’t has had interests in patents for a while. But at some point a conflict of interest could grow very large. What stops the gov’t from hindering competitor’s patents, or if nothing else, letting their patents through on an easier track?
Imagine if the gov’t became a patent troll…
“What did Europe ever come up with”? I am sure that TORA is just being rhetorical, rather than wanting a serious answer. Nevertheless, Dennis, it might be interesting to learn (for example) from Coke or Pepsi the source of the many machines that they use to make their cans of beverages. And aren’t most of the vehicles used in American oval track racing prepared in Europe? As for the proud assertion that America has advanced the skills of frugality and cussedness to hitherto unscaled peaks, as Francis Urquhart might have said “You might very well think that, Cowboy. I couldn’t possibly comment.”
What? JAOI – Why can’t I retire.
I think I will.
Give me a few months to get me affairs in order.
Christ, I can’t wait to get off this ship.
Patent work went from boring but decent to boring and agitating over the last 24 months.
patents and godly powers
11161345
“mean, come on, what did Europe ever come up with that beats out the corresponding American creation? Just try and think of something, I dare you!!!”
Well, let’s not be tooo hard on MaxDrei and his buddies. The USA would not be the great place it is if it had not been for our heritage of English law, Scottish frugality, Irish cussedness, Italian pizza and German hot dogs. Of course, each of them needed refinement before they became the American classics they are today.
I agree with American Cowboy.
I mean, seriously: If something is European, it starts off with a strong (but sometimes rebuttable) presumption that I’m not gonna like it. And then, if I decide to like it, it’s only in spite of European-ness. That’s true whether it’s a principle of law or some fancy kind of food.
I mean, come on, what did Europe ever come up with that beats out the corresponding American creation? Just try and think of something, I dare you!!!
inviting body punches:
My humble opinion is that more dashed lines should have been used. Infringement of this design patent would be a very tough sell unless the accused vehicle was identical to the depicted figures. You are probably right that Chrysler used this approach to try and avoid filing design patent apps. for each individual part, but at a minimum, the doors and the side mirrors should probably have been depicted with hatched lines.
IBP: sorry, not sure I understand. The right given by registration is a right to exclude. You get an injunction if, on the preponderance, the accused infringer is within the scope and can’t prove the thing to be invalid. Test for infringement (crude approximation): is the accused embodiment “closer” to the representations than the prior art. And as to yr 2nd para: Europe is effete, isn’t it? News to me that it is “vigorous” about anything. Can you tell me more about this vigour they are displaying?
Max–
A few questions, if I may.
Since it is a registration system, what is it that is actually given the attributes of property, and what is the essence of the test for infringement upon those property rights?
And if the reg is for 25 years, how is it that european entities are able to vigorously defend against importation into europe of articles that infringe designs from the 1950’s and earlier?
When will the USA be borrowing from the new, pan-European, design registration model? Soon, I hope but NONE of the other European IP law that differs from US Law.
There is a trend in this country to try to conform our law (and therefore way of life) to the European standard. If you want to live like a European, move to Paris! Let us Americans continue to be red-blooded Americans.
Cowboys? Heck yes!
I’m interested too. Europe now does design registrations, cheap to get, and potent when got, and I imagine Alicante is well familiar with such representations of the design (like on a college notebook, as MM postulates). Indeed, in their very lack of detail may lie their power (so long as the particular model of car is recognisable from them). Good things about design registrations in Europe are: i) they last for 25 years and ii) we don’t have to argue whether they are “obvious” or not. When will the USA be borrowing from the new, pan-European, design registration model?
John Mitchell & Windy City
Please explain why you think the patent is poorly done and bad.
In this design, it is the overall vehicle design that is disclosed. Usually in a situation like this, individual components of the overall design would also be claimed–for instance, the grille, the door, the tail lights, etc.–and a family of design patents would result, giving meaningful protection.
The overall design reflects how those individual elements inter-relate.
Although I may well be wrong, I don’t believe that in this case any of the components were claimed in other design patents.
However, that in itself doesn’t make this design patent bad, poor, or of little value.
I’m interested in what you would have done differently.
“a couple of years ago, GM transferred the (not insignificant) IP assets of its German subsidiary Adam Opel AG to a new Delaware subsidiary, GM GTO, for a credit note of approx. USD 1.5B. Credit note which has not yet been fully paid, BTW. Since then, Opel has been paying annual royalty fees of some USD 800M to GM GTO. (One small, but possibly troublesome detail, is that, according to the online European patent register, those transfers do not appear to have been registered in Europe).”
It’s been obvious to at least a few of us, for at least a few years, that IP valuation provides an awesome potential for on-the-books financial shenanigans. (As “good”, or even “better”, than valuations of securitized loan packages).
That picture looks like something you’d find scribbled on a high school sophomore’s notebook cover.
Good comment, John Mitchell… I am shocked that they didn’t use more dashed lines. The only dashed lines seem to be the tires, the convertible top and the headlights. The scope is incredibly narrow! Then again, the secured creditors probably have no idea about design patent law anyway.
This has had a much bigger impact in Europe, in relation to GM. According to press reports, a couple of years ago, GM transferred the (not insignificant) IP assets of its German subsidiary Adam Opel AG to a new Delaware subsidiary, GM GTO, for a credit note of approx. USD 1.5B. Credit note which has not yet been fully paid, BTW. Since then, Opel has been paying annual royalty fees of some USD 800M to GM GTO. (One small, but possibly troublesome detail, is that, according to the online European patent register, those transfers do not appear to have been registered in Europe).
According to those same press reports, GM GTO has, like Chrysler, securitised that IP at the US Treasury…
Unsurprisingly, European politicians are less than amused…
What a really bad and poorly done design patent. A security interest in and to that design patent has about zero value.
“One important practice issue is raised: Absent a specific agreement, to what extent must the applicant consult secured creditors during the prosecution of a pending patent application?”
Important practice issue? I’m sorry, first to file is “not a controversial issue” while this is an “important practice issue?”
To what extent? If the client says, please consult the secured creditors before taking any further action then it might matter. But more likely, I will still receive my instructions from in-house counsel. Otherwise, it would be, rightly, the farthest thing from my mind. By focusing on zealously prosecuting the application, I will have fulfilled all my duties, even to secured creditors, who will later thank me for providing something of value after the dust settles.
Now I know why Dennis is a professor and not a practitioner. I have never seen a better example of a tempest looking for a teapot.
Censored Gideon Pope,
Yes.
I thought that was a good design at the time, you can pick them for real steals: link to carmax.com
Patent drafter needs to relax and go take a class on securities and bankruptcy.
I’m sorry. I’m still bored right the hell out of my mind.
Would anybody mind if I retired?
BigGuy,
One needs to review the security agreement. If the appropriate constraints on use of the IP (including abandonment) are not covered, then the assignee can rightfully instruct counsel to do as the assignee sees fit, including abandon a still viable case, or let a patent lapse due to nonpayment of an annuity.
“Why would an applicant have any duty whatsoever to a secured creditor? A secured creditor is not an owner of the pending applications.”
What if the assignee asks you to abandon a still viable case, when you know there’s a secured creditor?
Why would an applicant have any duty whatsoever to a secured creditor? A secured creditor is not an owner of the pending applications.
A better question is what duty does the management of Chrysler have to its secured creditors vis-a-vis its shareholders. As a number of folks have noted, the bailouts are not, as the papers report, a bailout of shareholders, but rather a preference for creditors over shareholders since both would take a bath in bankruptcy but only shareholders are wiped out by the bailouts.
In any case, let’s be honest. The pending patent applications are chump change compared to the economics driving these deals.
The irony is astonishing however isn’t it? Ho hum “innovation” that barely skims by obvious (if it does at all) is routinely patented. Real innovation? Pshaw, more rarely patented.
The guy is a mans man, he doesn’t need a stinkin’ gov handout to make his business go.
From a Scientific American article on the Lunocet:
He notes that he won’t be patenting the Lunocet’s design. “If you’re taking ideas from nature,” he says, “how can you then go to the patent office and say these are mine?”
From time to time there are some folks on this blog that find it hard to believe that actual undisputable innovation does in fact occur. Meaning of course, innovation that no reasonable person would ever call obvious to one of ordinary skill in the art and clearly passes all hurdles to patentability.
Gentleman, I present to you the Lunocet.
link to lunocet.com
Likely closest prior art: 4541810
Miles above trivial contributions to the art all accomplished in one fel swoop.
Apparently it was the atlantians that had first though to use this technique: link to youtube.com
When naive young patent examiners sign up for the job, that’s the kind of thing we believe we’re signing on to examine.
As a side note I notice that I can’t find any application associated with the project, if he doesn’t want to 102 himself he better get one in soon.
goodness.
Secured creditors are not inventors or applicants; thus, not clients of the patent practitioner.
Whether to consult a secured creditor for guidance is the client’s decision. Perhaps a security agreement might include a provision requiring consultation. Otherwise, one might expect the risks of unguided patent prosecution to be part and parcel of the patent security interest; just as the risks of unguided retail lease negotiations are part and parcel of a commercial development mortgage.
Regardless, the secured creditor has no business directly interfacing with the patent practitioner; and the patent practitioner would be in violation of ethical duties by reaching past the client to communicate with the secured party.
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