In his client alert, leading design patent attorney Perry Saidman explained the decision impact of the Maatita design patent case:
This case opens up a whole new opportunity for design patentees to broadly claim their designs with but a single plan view, and not worry too much about satisfying the disclosure and enablement requirements of § 112. . . . [A] golden opportunity for design patentees to obtain broader protection.
[Link]
For those inquiring, “enablement” in design patent practice means you must be able to reproduce the shape and appearance of the ornamental design claimed from the drawing disclosure. That is the view or views of the drawing must clearly and adequately depict the shape and appearance of the ornamental design claimed so that it can be reproduced. It’s not a hard concept to grasp.
When you look at the USPTO arguments, which relies on imagined embodiments that would have been patentable distinct, the rejection should have been grounded on eligibility and/or lack of unity. The last paragraph of Prof. Burstein at link to patentlyo.com also suggests that the real issue in Maatita is one of eligibility of claims to ornamental designs reading on several species or that these species should be claimed individually in several design patents.
Therefore, indefiniteness and lack of enablement are a distraction from the real issues.
“should be claimed individually”
should be…?
Is that not unlike wanting only exacting single “picture claims” that provide for zero “climbing a rung on the ‘ladders of abstraction'”…? Does not such fly directly opposite recent other changes to design patent law passed by Congress?
I challenge Perry to find us a design patent applicant who ever worried about (lol) enablement.
What does “enablement” even mean for a design?
Would there ever BE a reason to worry about enablement? Can you provide a situation in which enablement would be a cause for concern**?
**and let’s exclude situations of conflicting inputs – that’s not the type of “enable” that I think that we are talking about.
Ask Perry. He brought it up.
I am asking you – you are talking about it like it means something to you.
(Of course, Perry is free to chime in)
you are talking about it like it means something to you.
It’s clear, in fact, that it’s my failure to find meaning in the term “enablement” which prompted my question.
But since you asked, how about a 3-D design for an ornamental aluminum atom where the electrons form a smiley face?
“It’s clear, in fact, that it’s my failure to find meaning in the term “enablement” which prompted my question.”
No. It is not.
You may be comfortable with your typical levels of snark (and lack of engagement on substantive matters) to feel that your question was to a substantive point, but it was not.
It’s illuminating to discuss design patents, as this is an area in which we likely would find Ends to be similar, and yet, your lack of addressing means to those Ends continues to be an issue.
For example, your quip of “how about a 3-D design for an ornamental aluminum atom where the electrons form a smiley face?” comes across as mindless snark, with you thinking that somehow you are being clever by being “absurd.”
Was there a “real” question there? If you want a smiley face 3D design, is the context of “aluminum atom” meaningful? Does this impact the area that I laid out as a “keep out” zone (can a single aluminum atom HAVE an ornamental design at all, let alone a smiley face one?)…?
In other words, you (again) appear to agree with me and my statements as to the inanity of trying to force fit Design Patents into a Utility Patent framework, but you cannot help but be snarky – even to someone with whom you agree on the Ends.
On top of being snarky and empty, you seem to think that you have been clear. You need to try to focus first on being germane and providing substance and far less on snark and what you deem “clever.”
being clever by being “absurd.”
Indeed. That’s way, way better than being “absurd” because it can’t be helped which is just one of the major life problems that you struggle with here everyday.
“That’s way, way better than being “absurd” because it can’t be helped”
Your feelings are noted.
As is noted that if you heed my advice and try to actually gear your comments to substantive matters, you would see that these particular feelings are unfounded.
It would be a double “win” for you!
Of course the universe of prior art that reads on the design (any design) is also opened up.
Oh wait: I forgot that these are design patents which aren’t examined anyway.
I may agree with you that “design patents are not examined anyway,” but the Prof. that you wanted to agree with pointed out how design patent examiners have a “higher pedigree,” which would point opposite of your statement.
The “middle ground” may well be that examination under the utility patent model does not appear to be done at all, even if some other model may be being attempted by the Office.
Speaking about “force-fitting,” how does the concept of “Genus-Species” fit for design patents?
Did not the legislature also widen the capability of design patents for “Genus” protection?
More of the insanity of “force-feeding” of design patent law into a utility-driven legal framework:
What does enablement mean in a design context?
What does possession mean?
Pause and reflect on the recent “cusp” in regards to “possession” in 35 USC 112: does the multiple noun phrases (two “what’s” and a compounded “how”) even make sense for a design?
As much as Malcolm may whine about the figure being the claim, the figure is ALSO the possession.
Also, given as design patents can have no utility, the “enable” part of 112 is meaningless. Enablement, then, also coalesces into the figure itself.
The (apparent) key to the “A-Ha, there is broader protection to be had” comes naturally from recognizing that breadth is not the same as indefiniteness.
For those wanting some “ipsis verbis” explicit statement of “possession” (and refuse to engage on the point of the nigh-boilerplate “these various components may be mixed and matched”), the 2D breadth must be especially galling.
Please take a deep breath and try to explain what on earth that last paragraph is supposed to mean.
On second thought, forget it.
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