Jeff Berkowitz is a Miami real estate developer, lawyer, and now inventor. Berkowitz, along with architect Bernardo Fort Brescia and civil engineer Ronald Klemencic were recently awarded a design patent on their design for SkyRise Miami. D908917 (“The ornamental design for a building as shown and described.”). The building is apparently now under construction, although at a somewhat delayed pace.
The design patent took-up 3 1/2 years of prosecution. That is an unusually long time for a design patent. The examiner initially issued a restriction requirement because two sets of drawings had been submitted. Subsequently, the examiner identified inconsistencies in the various views that required repeated correct.
One additional trick in the case is that the tower was originally proposed back in 2013. The image below comes from around then and is certainly prior-art.
Anyone know the actual completion date of this project? And if the builder broke ground? Own some property around area, would love know.
Sorry, anon, but IMHO, the photo is not a good primary reference, i.e., not “basically the same” as the claimed design, because there are so many claimed features that are simply not in the photo. No primary reference = no 103 rejection. And you need a primary reference before any secondary references can be considered; you can’t supply the deficiencies of a purported primary reference by relying on secondary references.
… conversation continued in-line down below…
Reportedly one reason some new Miami luxury towers are delayed is that some banks have started to wonder if long term financing for a building that is based barely above sea level even in between hurricanes is really a good idea? Also, there is the brand new federal law against secret [shell front] purchases of luxury condos and other U.S. real estate to reduce international criminal money laundering and its revenues.
“a building that is based barely above sea level ”
Ha! Not to worry. Should a higher sea level become a reality . . . will make for the world’s greatest water slide . . .
Key chain fobs? Eiffel tower fobs are all over Paris knick Knack shops.
Dennis, did the examiner for this design patent actually make a 103 rejection at some point in the prosecution? That would indeed be newsworthy. [I thought the valuable research study you did awhile ago showed that design patent applications almost never get any?]
This design patent is literally a picture claim. So easy to design around, it’s not worth analysis.
Thanks Perry – but even as a picture claim, is it not worth noting the presence or absence of the prior art item provided by Prof. Crouch (in at least a 35 USC 103 sense)?
It’s not a good reference because there are so many more things claimed in the design patent than are shown in the photo.
Sure – perhaps not a good reference by itself – but (much like Paul’s comment at 3), the point being obviousness rather than anticipation might be in play.
Off any(all?) of those so many other things claimed, would it not be (relatively) easy to come up with other prior art items that would (correctly**) satisfy combining to obtain a (full) 103 rejection?
**some of these terms are placed in parentheticals as most know that 35 USC 103 is NOT employed in the same manner as it is employed for utility inventions, eh?
Sorry, anon, but IMHO, the photo is not a good primary reference, i.e., not “basically the same” as the claimed design, because there are so many claimed features that are simply not in the photo. No primary reference = no 103 rejection. And you need a primary reference before any secondary references can be considered; you can’t supply the deficiencies of a purported primary reference by relying on secondary references.
Thanks for putting the comment here as well.
Let’s explore your statement just a little (and please note that I am trying to ‘tease out’ here some of the “utility 103” thinking that may well be distinguishable from “design 103” thinking).
When you assert that the primary reference “must have more,” that is clearly not a “utility 103” view.
There is no such “minimum level for a reference to be a primary reference” for a utility 103 rejection to be proper.
Likewise, for a utility 103 rejection, there is no limit on the number of references that may need to be cobbled together to (finally) arrive at ALL of the claimed features.
Your statements appear to indicate that BOTH of these well-established utility 103’isms do not apply to design 103.
Do you accept these propositions?
yes
“..you can’t supply the deficiencies of a purported primary reference by relying on secondary references.” Why and for what good reason other than an old CCPA case is that completely out of whack with normal patent law even though design patents are under the same 103 statute?
Which case is that, Paul?
Among old CCPA cases apparently still being followed in design cases even though inconsistent with normal and current 103 case law, including KSR, are In re Nalbandian, 661 F.2d 1214, 1215-16 (CCPA 1981) and In re Carter, 673 F.2d 1378 (CCPA 1982), both cited in MPEP Section 1504.03 and Walter E. Durling v. Spectrum Furniture Company, Inc., 101 F.3d 100, 103 (Fed. Cir. 1996).
Thanks Paul.
Looking forward to your response to Perry.
“ even though inconsistent with normal and current 103 case law,”
Paul, this is the type of statement that appears to rise (lower) to being ethically questionable.
That is, unless you can counter Perry’s dialogue here (dialogue that has often been repeated, and of which I know that you are aware of.
You don’t get to pretend that you don’t understand context when you are advocating for a certain legal position. That’s just not inte11ectually honest, nor helpful.
“normal” patent law? Design patent law is not abnormal. As discussed on this blog previously, its presence in 35 USC is an accident; it should be part of copyright law. Long ago, Judge Rich recognized the futility of trying to adjudicate obviousness for designs; he advocated a copyright-based design registration system – didn’t happen. So, here we are. Since designs are all about how something looks, not how it works, a separate body of case law grew up to deal with designs. There are sections of 35 USC that make no sense to try and apply to designs, e.g., 112 which requires the spec to teach one how to “make and use” an invention. A design spec has never taught anyone how to “make and use” a design; it only teaches one how a design looks. So, I suppose, using your “normal patent law”, all design patents ever issued are invalid for failing to comply with 112.
Completely agree.
Further, the very basis for this era’s number one travesty with utility patents rests in no small part on an aspect that design patents must not control**: utility.
Eligibility has seen the conflation of the unambiguous statutory categories with Justice-scrivened “exceptions” that more properly speak to utility than anything else (hence, the emergence of ‘practical application’ as the easiest path to show eligibility).
** I do note some nuance here because it should be clear that design patents may still exist on items having some utility (I am thinking of, for example, tire tread patterns). The nuance is that the sine qua non of what a design patent protects is expression and not utility.
As Perry puts it, the laws of 35 USC simply do not — and cannot — “track” directly from utility case law to design case law.
It is a grievous error to so callously assert otherwise (as Paul does – and this is not the first time that Paul has so done).
“This design patent is literally a picture claim. So easy to design around, it’s not worth analysis.”
Yes, if only it was really that fast and cheap for someone sued on a design patent to get out of it, or at least get sanctions, more like a utility patent with a picture claim.
Paul, your complaint is about the legal system, not design patents, no?
I hear your distinction.
It is only TOO often that the ogre of THE LEGAL SYSTEM (and its costs) are too willfully passed off as reasons to denigrate and decimate the patent right.
In fact, the Efficient Infringers have literally made it one of their life’s missions to do so.
Design patents can be quite valuable when second sourcing, standards, etc. requires direct copying. Dashed lines and some creativity can also make a design claim quite broad.
So what. If you’re the first to build this thing no one will get funding to copy you. Worthless design patent.
Actually, no one will copy it. Architectural design patents are normally meaningless unless they are for something that the owner replicates in large quantities, e.g., the Apple staircase, an Exxon gas station, a restaurant chain, etc.
I guess they got a Patently-O post out of it.
Plus they can say that their building has a “patented design”. To a patent attorney, this is pretty meaningless, but to those less familiar with the patent system, this can sound impressive.
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