design_law

design_law, 21 days ago

1. The "thousands of existing design patents are now at risk!" critique is not nearly as damning as some lawyers seem to think it is. That's what happens whenever the law changes. Move on.

design_law, 21 days ago

2. I'm equally unsympathetic to arguments that this decision will "hurt SMEs." You know what else hurts SMEs? Bad design patents.

design_law, 21 days ago

3. On uncertainty: Yes, this decision creates uncertainty. That's what judicial decisions do. It's the nature of our system.

design_law, 21 days ago

3a) The only way to really avoid uncertainty is to create rules that make it impossible (or nearly so) for any design claim to ever be rejected/invalidated. That may be good for applicants (and those who charge them for patent prosecution services) but it's bad for everyone else.

design_law, 21 days ago

4. We won't be able to see how this is applied at the USPTO, except in cases where applicants overcome 103 rejections and a patent issues. That's frustrating. Yet another reason why the USPTO's non-publication rule should be changed.

design_law, 21 days ago

5. I've been critical of how the Federal Circuit applied Rosen. But I still think the basic requirement itself was good because it focused the inquiry on the design as a whole.

See: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1926162

The problem in LKQ (as in many other cases) was that the Federal Circuit required too high a degree of visual similarity. See https://patentlyo.com/patent/2022/12/defense-rosen-references.html

#DesignPatents #RestInPeaceRosen

design_law, 21 days ago

6. I still don't get why some of the judges are all worked up about analogous arts. Or what the new approach really changes vis-a-vis Glavas.

design_law, 21 days ago

7. It amuses me to see the anti-KSR vitriol this decision has inspired in some utility patent dudes.

design_law, 21 days ago

8. One silver lining: At least the Federal Circuit didn't buy into the idea that we should just apply utility patent tests to design patent cases (because, among other reasons, we can't). See https://patentlyo.com/patent/2023/07/design-patent-exceptionalism.html

design_law, 22 days ago

@meredithlowry I have so many questions.

design_law, 22 days ago

@meredithlowry Maybe it's for very tiny parties?

design_law, 22 days ago

@meredithlowry Does it? I'm such an introvert, it doesn't sound bad at all to me! 😂

design_law, 22 days ago

For those who aren't familiar: These aren't neutral groups. They are promoting their own economic interests. Which is fine. As long as you understand that.

design_law, 22 days ago

"Where a primary reference alone does not render the claimed design obvious, secondary references may be considered."

But when/how DOES a primary reference "render the claimed design obvious"?

design_law, 22 days ago

"Consistent with KSR, the motivation to combine these references need not come from the [secondary] references themselves. KSR, 550 U.S. at 418–19 (rejecting a rigidly applied TSM test). But there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference...."

What KIND of "record-supported reason"?

design_law, 22 days ago

They cite Campbell for that last point but that was a pretty unusual case. See generally https://patentlyo.com/patent/2019/11/guest-puzzle-campbell.html

design_law, 22 days ago

Anyway, time to update Chapter 12: https://patentlawcasebook.com/

design_law, 22 days ago

@kathleenthelaw Lol, fair!

design_law, 22 days ago

@meredithlowry I'd say this is anticipated but I guess the shape it a little less spherical than the Magic 8 Ball?