Smith on Design Patents

CinderellaBy Dennis Crouch

When I began writing Patently-O in 2004, design patents were largely thought of as akin to a pre-ball Cinderella: In rags, forlorn, and quite pitiful. Things have changed.  Design patents are more valuable than ever and their trajectory continues to rise.

Matthew A. Smith (Foley) recently put together a short treatise on design patents (short for a treatise) and offered to publish Version 0.9 here as a preliminary draft for commentary. Coverage in the 82 page volume includes general background on the laws of design patents; design patent application preparation and prosecution; design patent enforcement; tests of design patent validity; and design patent remedies.  As per his usual, Smith’s approach is to provide straightforward analysis in practical terms and with direct reference to the underlying sources of law.

Read it while its hot: Matthew A. Smith, Design Patents, Ed. 0.9 (Prelim. Draft) (Dec. 17 2012).  /media/docs/2012/12/2012-12-17_design_patents.pdf [Updated]

9 thoughts on “Smith on Design Patents

  1. Smith above article about the Apple vs. Samsung and the product and user interface design to the meaning of the related impact on the various works published in the last week here is the link. Design patent IP assets of major corporations has been evident.

  2. 103 is a statutory requirement of both design and utility patents as to whether or not the article’s ornamentation is an “invention” or not, not whether or not it is infringed. The “ordinary observer” test is a non-statutory case law created design patent infringement test. It does not meet the 103 statutory requirement for “having ordinary skill [not NO skill] in the art to which the subject matter pertains.”

  3. Paul, if a PHOSITA is the proper entity (phORDINARYsita)for 103, and a Design is “observed”, what is strange about an “ordinary observer” ?

  4. Thanks for an excellent and timely new treatise.

    One majaor issue I wish the author would address in this treatise is this: The obviousness test for design patents is the same 103 statutory test as for any other patent. So how can the 103 “person having ordinary skill in the art to which the subject matter pertains” obviousness test NOT be for design patents in its entirety for a person of ordinary skill in article of manufacture ornamentation or design? What does any part of an “ordinary observer” test logically have to do with 103?

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