Design patent infringement

Three-way visual comparison test
Three-way visual comparison test

Design patent infringement isn’t based on exact copying. Rather the test is if an “ordinary observer” will see “substantial similarity”. 

Determining if a particular design of interest does, or does not, infringe upon another design patent is an interesting gray area of intellectual property law.

According to the 2008 Federal Circuit ruling in Egyptian Goddess, Inc. v. Swisa, Inc.” 543 F.3d 665: to infringe, a given design does not have to be an exact copy of another design patent.  Rather, the question is one of “substantial similarity” under the “ordinary observer” test.

Great — what the heck is this, and how does this test determine design patent infringement?

The underlying idea is that customers looking to purchase a design patented product “Y” should not be deceived by similar looking product “X”.

So as a practical matter, you should run this test using ordinary observers. Realize that if you personally are involved, it may be difficult for you to be fully objective.  In this case, you are probably not a suitable “ordinary observer”.  Instead, determine if disinterested outsiders see “substantial similarity“.

Although sometimes the differences between a given design and a particular design patent may be so great that no further comparisons are necessary, sometimes the designs are close. Here a “three-way visual comparison test” can be useful. This test can be done by making a composite illustration showing the patented design on one side, the “accused design” (i.e. the design being investigated) in the middle, and other designs representing the closest prior art on the other side.

Essentially it is a pattern recognition problem.  The idea is to use the prior art examples to instruct the ordinary observers as to how much variation is typical in this field.  Then the ordinary observer can determine if the design of interest is overly close to the design patent of interest, or not.

This sort of approach was used to compare handheld blender designs in Braun Inc. V Dynamics Corp. 975 F.2d 815, in 1992.  As you can see in the above image, the “accused design” was visually much closer to the patented design than it was to the closest prior art. The court determined that the “accused design” was in fact infringing.

The best times to consider these issues are before you start producing and selling a new design. So if you have a new design that you are worried about, get the opinion of some neutral outsiders ASAP.  Indeed, consider running some focus groups as appropriate. If things look too close, consider making some further design changes, and trying again.

Copyright: DMCA vs Fair Use

39 steps movie poster
39 Steps movie poster (copyright expired)

The DMCA (Digital Millenium Copyright Act) has created a great copyright law divide between analog and digital media. For analog works, traditional copyright principles such as “fair use” apply. For digital media, not so much, because the DMCA shifts the burden of proof.

Plays, for example, are an analog medium. A good way to understand the differences is to analyze a modern play, and see what elements might cause problems for digital content.

Traditional Copyright Law: The four-person play “39 steps” humorously interprets the classic 1935 Hitchcock film. Appropriately enough for our topic, the plot involves intrigue, secrets, and a falsely accused innocent man. This play is also a good example of how, at least for analog media, creatives who understand copyright law can use a mix of public domain and copyrighted source material in their own creative works.

The 1935 Hitchcock film has a US copyright that expires in 2026. The film had a large cast and budget, was a big success, and had dramatic elements that Hitchcock reused in later films.

By contrast, 39 steps (the play) was written in 1995 (later revised in 2005). It also has been very successful, first as a 9-year run in London, and since 2008, in the US.

What about copyright permission? The play was written so that permission wasn’t needed. The playwrights cleverly exploited various permissive areas of copyright law, including copyright term limits and fair use.

    • The movie was based on a now copyright-expired 1915 novel by John Buchan
    • The play uses many fair use copyright principles including:
        • Parody – the play pokes gentle fun at Hitchcock’s works
        • Transformation – the play uses clever tricks to reimagine the movie
        • Amount of material taken – Only short Hitchcock film references
        • Trivial impact on the potential market for the original 1935 film

This is traditional copyright law. It acts to protect the interests of content creators. It also acts, through fair use, to allow others to create new works.

DMCA Copyright Law:  Sadly, for digital media, copyright law presently suffers from regulatory capture. Specifically, the Digital Millennium Copyright Act (DMCA). Although the DMCA states that it “shall not affect” fair use, this is not the case. In reality, the DMCA has certain “guilty until proven innocent” features that have greatly damaged fair use. The “gotcha” is that legally, fair use does not mean “no” copyright infringement. Instead, traditionally, fair use is only a “defense” against an accusation of copyright infringement. So, under traditional law, all fair use material is still infringing, it is just OK infringement.

Takedown notices: The DMCA requires content servers, such as YouTube, to almost immediately remove content in response to a takedown notice. This happens when anyone representing a copyright holder asserts, in a takedown notice, that: the content “infringes”, and was unauthorized by the owner or by the law. There are no perjury penalties regarding the content assertions. (Perjury does apply if there was no authorization.)

Think that “or by the law” includes fair use? Maybe, but to what extent? Remember that traditionally, all fair use material still infringes, and it may literally take a Federal court to completely decide if the fair use is OK. This can be prohibitively expensive and time-consuming. So, a takedown notice that fails to consider, or only superficially considers, fair use is not committing perjury.  (No DMCA penalties if they did not tell the truth.)

Hence the 39 steps example. The DMCA switches the burden of proof and undermines centuries of fair use law. It gives us intrigue, secrets, and innocent persons accused of dastardly deeds.

All is not lost, however. Some hopeful developments include:

    • In an important 2015 ruling, the Federal 9th district (California) court held that 17 U.S.C. 107 requires at least a limited DMCA fair use analysis.  So copyright holders need to at least consider fair use, or at least pretend they did.
    • Due to the court decision, fair use is now a legitimate response to a takedown notice. For example, YouTube has a copyright counter-notification process to respond to takedown notices. YouTube states that it may consider, at least for the US, certain types of fair use defenses.
    • YouTube has also recently filed a lawsuit against a defendant who allegedly practiced extensive DMCA takedown fraud and extortion.

But the bottom line is that digital content creatives need to be cautious. Don’t just quickly read about fair use, and assume that it will automatically protect your work from takedown notices. It won’t.

Amazon and IP disputes

The court of Amazon

Amazon.com is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks.

Amazon.com markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.

Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.

Trademarks:

The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.

The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name.  There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.

Copyrights:

Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.

Patents:

Amazon has recently announced a pilot patent dispute program.  The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense).  Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.

The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.

Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.

Saving patent eligibility

patent eligibility
USPTO attempting to fix legal confusion

The 2019 USPTO revised patent subject matter eligibility guidance attempts to bring some coherence and consistency to “Alice” patent eligibility issues.

USPTO director Andrei Iancu recently promised that the USPTO would try to clean up the “Alice” patent eligibility mess.  On January 7, 2019, the USPTO issued the “2019 Revised Patent Subject Matter Eligibility Guidance.” At first glance, this appears to be a promising approach. Hopefully, this 2019 guidance will greatly reduce the number of semi-random 35 USC 101 rejections. Some excerpts are shown below.

Properly applying the Alice/Mayo test in a consistent manner has proven to be difficult, and has caused uncertainty in this area of the law.

Since the Alice case, courts have been “compare[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases…While that approach was effective soon after Alice was decided, it has since become impractical. The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases…The USPTO, therefore, aims to clarify the analysis…

Under the procedure, if a claim recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea as grouped in Section I, above), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception…

If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis…

Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application… in revised Step 2A examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application.

It is critical that examiners consider the claim as a whole when evaluating whether the judicial exception is meaningfully limited by integration into a practical application of the exception.

If the claim as a whole integrates the recited tentative abstract idea into a practical application, the claim is not directed to a judicial exception (Step 2A: NO) and is eligible (thus concluding the eligibility analysis).

Almost all patent applications are filed for practical applications. This 2019 guidance makes nearly all practical applications patent eligible.  It also somewhat reframes eligibility more in terms of the original (and in my opinion much better) “preemption” considerations. Hopefully, this will encourage examiners to stop rejecting otherwise good applications on dubious and subjective “not patent eligible” grounds.

 

Trademark “specimens”

Mere “advertisements” will be rejected!

Trademark “specimens” are required to prove “use in commerce”. Some website screenshots can work, but the recent In Re: Siny ruling shows that others may be rejected as “mere advertisements”.

Trademarks are very much a “use it” or “lose it” type of intellectual property. The US requires that before any trademark can issue, the owner must submit a “specimen” showing that the mark is actually being used in commerce. These specimens usually contain a JPEG (image) file with one or more examples of use in commerce.

Advertising doesn’t work: It is possible to just advertise something without actually selling it.  Thus “mere advertising” is not considered adequate proof. (For a funny example, look up “VIP“.)

Most trademark law predates the internet. However these days, much commerce is internet based “e-commerce.” Using webpages for proof can sometimes be problematic.  Webpages can be ambiguous.  Is the webpage for just advertising, e-commerce, both, neither? The old pre-internet rules are not always on point. So how does the USPTO decide what is and is not OK here?

The Federal Circuit, in the April 2019 In Re: Siny Corp. ruling, has clarified the situation somewhat. In this case, the Siny corporation filed for a trademark application. Their specimen was an image of a webpage. This webpage showed their product, along with a sales phone number and email address. So is this only advertising (reject), or mixed advertising and e-commerce (OK)?

The USPTO trademark examiner decided that this was “mere advertising”, and rejected the specimen. The examiner argued that just providing sales contact information, without more, wasn’t enough. His position was that additional sales information, such as “minimum quantity, cost, payment options or shipping information” was also needed.

Siny appealed to an intermediate USPTO PTAB board. The USPTO PTAB board agreed with the examiner. They further ruled that an adequate website specimen should show a website that functioned like a pre-internet “point of sale” display. Specifically, the website should give “enough” information to make a “purchasing decision”. They argued that the Siny specimen was deficient because: “if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”

What is “enough” here? The PTAB board used the examiner’s list of at least some of: “minimum quantity, cost, payment options or shipping information”. Siny had none of these.

Siny appealed again, this time to the Federal Circuit. The Federal Circuit was pretty cautious. They gave the usual disclaimers that “this is a factual question which must be determined on a case by case basis”, with no “rigid” “bright-line” rules. However, they also decided that they “cannot say that the PTAB board acted improperly”.  And this is what we have for legal guidance at present!

Take home lesson: If using webpage-based specimens, try to incorporate as many elements from the “minimum quantity, cost, payment options or shipping information” list as possible. Add still more elements if available. Not all elements may be needed, but better safe than sorry.

Nice Trademark Classes

Swimmer
Trademark classes are like swim lanes

Welcome to the International Nice Trademark Class system, where we attempt to fit all types of goods and services into only 45 different classes. The results can be a bit strange!

As previously discussed, trademarks help protect the public from accidentally purchasing inferior products from unscrupulous business. Trademarks also help protect legitimate business from inferior knockoffs as well.

As economic growth and international trade expanded, trademark law encountered problems.  There were more products and services than there were good trademark names. Legal mechanisms needed to be created to allow similar trademarks to co-exist.  But this could only be in cases where the products and services were so different that customers would not be confused.

The trademark classification system evolved to allow at least some recycling of similar trademark names. But this is only allowed between very different types of products and services. The underlying concept is somewhat similar to the idea of “area codes” and “swim lanes”.  Think of all economic activity as being a “swimming pool”. The trademark classes divide up this swimming pool into a series of defined “swim lanes”. Any given area of economic activity thus has its own designated “swim lane” (trademark class).

The Nice classification system

Originally, every country defined its own country-specific trademark classes (swim lanes).  This created a lot of international trade confusion. To standardize this process, various countries met in Nice France in 1957. They adopted an earlier (1935 era) proposal and established a standardized list of 34 different trademark classes. This was originally just for trademarked goods. Later, 11 additional trademark service classes were also added. This brings us up to the present total of 45 goods and services. So at present, the trademark swimming pool (“all of commerce”) has 45 swim lanes. This is called the “Nice Classification”.

As might be expected from a 1935-era based classification system, it is a bit dated. Products in general use before 1935 tend to get more than their fair share of different trademark classes. More modern products and services tend to get crammed into a relatively small number of trademark classes. But this is the internationally standardized trademark law system we have, get used to it.

Why do we care?

Nice trademark classes are important when registering new trademarks. They are also important when trying to see if there are conflicts between trademarks. As a rule of thumb, if two similar trademarks describe products or services that fall into different Nice classes, then this is usually OK.  Trademark law will tend to assume that customers will not be confused.  But if two similar trademarks describe products or services that fall into the same Nice class, things may not be OK. There may be a possibility of confusion.

So, if you are filing a new trademark, it is important to specify what types of goods and services you are selling or planning to sell.  This allows the attorney to determine the Nice class for the goods and services.  A proposed trademark that may be totally fine for some Nice classes could be a total non-starter for other Nice classes.

Confusingly Similar Trademarks

Confused snail

If a proposed trademark looks or sounds too similar to another mark, and the proposed trademark is in a related area of commerce, it can be rejected as being confusingly similar.

Trademark applicants often think that if their proposed trademark is not identical to an existing mark, then it will be approved. This is not the case.

The law, in general, is all about human mental states and intentions. Trademark law is no exception. Here trademark law acts to protect us (as consumers) from accidentally purchasing the wrong thing. Trademark law also protects us (as sellers) from having unscrupulous competitors mislead our customers. For trademarks, a key issue is: would trademark “A” confuse the customers of trademark “B”?

For complicated “confusingly similar” cases, the courts can consider up to 13 distinct “Dupont factors”  (from In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563, 1973).  However, we can simplify. For most cases, the two biggest issues are Dupont factors 1 and 2:

Dupont factor 1:The similarity or dissimilarity of the marks in their entireties (to a human, who may not be paying careful attention) as to appearance, sound, connotation and commercial impression.

If a trademark examiner, judge or jury considers all of the elements of the marks and thinks that the marks are similar, this is bad. If there is actual real-world evidence that customers are being confused, this is also bad. There is some good news, however.  If similar-looking trademarks are for very different products or services, then the chance of confusion is much less. So this can be a way to escape this problem.

For example, back in the day, a customer looking to purchase music might not be confused by similarly named computer products. So originally, trademarks for Apple records and Apple computers could coexist. (Now not so much, and deals had to be made — which is OK under Dupont factor 10.) This brings us to:

Dupont factor 2:The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.” (Here there are various trademark classes, and products and services in different trademark classes are usually considered to be dissimilar.)

USPTO trademark examiners will often just initially consider factors 1 and 2. However, if you get a “confusingly similar” rejection, or someone else raises this issue, it is time to start considering the other Dupont factors.

In defense, arguments might be made that the suppliers use different trade channels (factor 3); that the buyers are sophisticated buyers that are not easily confused (factor 4); or that multiple suppliers use a similar type of mark to sell similar goods or services (factor 6).

Another good option to consider is revisiting factor 2. See if you can narrow the scope of goods or services covered by your mark. If so, perhaps you can avoid overlapping with the goods and services covered by the other mark.

Inventorship and co-inventors

Participants: RRZE (CC BY-SA 3.0) license

US patent inventorship criteria are tricky, but “conception” of the invention and “intellectual domination” are more important than reduction to practice.

If multiple people are involved with your invention, one issue that commonly arises is: “who gets listed as inventor or co-inventor, and in what order?”

For academic and scientific papers, there is a common order – the junior person who did most of the work often goes in front, the senior professor or principal investigator who may or may not have done much work goes at the end, and other persons go in the middle as co-authors according to usually unwritten criteria. So long as no one is seriously offended, the co-author list otherwise doesn’t matter too much.

Many inventors begin their careers by writing academic papers, and often make the mistake of thinking that the same rules apply to patents.

However, patents are different.  You probably wouldn’t let a friend put his name on the deed to your house unless you want to give him co-ownership.  Patents are more like property deeds.  In the US, just who is and who isn’t a patent inventor can make a big difference in terms of who ultimately owns the patent.  As a result, patents have their own set of rules as to who is and who isn’t considered an inventor.

So what are the rules for inventorship? The USPTO rules are covered by MPEP 2137.01 INVENTORSHIP.  These rules were worked out through a number of court cases, and are occasionally a bit fuzzy and open to interpretation.  At the risk of oversimplification, the main idea is that the inventor is the person who conceived of the invention, and not necessarily the person (such as a supervisor) who suggested working on the problem, or the person (such as a technician or programmer) who did the hands-on work to reduce the invention to practice (e.g. make a working prototype). In fact, reduction to practice is usually not necessary.

Other considerations, such as the issue of “intellectual domination”, are also important.  An inventor who is “intellectually dominating” an invention may still be able to use suggestions from others without making them co-inventors.

Things can get tricky. Sometimes the supervisor’s suggestion is really the key insight behind an invention,  making the supervisor an inventor. Similarly, sometimes the person reducing the invention to practice ends up solving unexpected problems, and these solutions form a key part of the invention, making the “technician” an inventor.  Here looking at the invention’s claims can help sort things out.  Who was responsible for what?  Note, however, that claims can change during the examination, and sometimes an inventor can end up being added to an invention, or left on the “cutting room floor” as a result.

In any event, the best time to consider these issues is in advance of filing.  It is also important to discuss assignment in advance of filing as well since the usual goal is to have 100% of the invention assigned to the same persons or organizations.

 

Writing patent claims

A patent claim is like a jigsaw puzzle piece
A patent claim is like a jigsaw puzzle piece

Writing patent claims is analogous to describing multidimensional jigsaw puzzle pieces using words.  Your claims have to fit in the spaces between prior art.

Patent claims are the most important part of a patent because the claims are legally enforceable.  Claims are also the trickiest part because they have to follow many rules.  Claims should describe your invention, not read on the prior art, and not be obvious variations on prior art. Claims should also be precise enough that others can clearly determine what it is that you are claiming.

Like a jigsaw puzzle:  As a useful analogy, consider each patent claim to be somewhat like a multidimensional jigsaw puzzle piece. Each claim should be written using words and clauses that, in addition to describing your invention, “bend in” to avoid prior art, and “bend out” when there is no prior art.

From the patent examiner’s standpoint, he or she is looking at your claims in the context of the other prior art (the other pieces). The examiner is determining if each of your particular claim “pieces” is fitting nicely into the holes between prior art, or if they are hitting the other prior art “pieces”.  If there is overlap, the examiner will, at a minimum, want you to make your claims “bend in more” to avoid that prior art.  Part of the process of writing patent applications is to try to anticipate where this might happen and to write the patent in a way that gives you more options to “bend in” and “bend out” during the patent examination process.

There is one big difference between jigsaw puzzles and patent claims, however.  In jigsaw puzzles, although the different pieces can’t overlap, the gap between the different pieces can be made very small.  Think of this gap as the area where, given that one piece is “bending in“, it is “obvious” that the other piece must “bend out“.

Unlike jigsaw puzzles, examiners often require that this “gap” be big enough so that the shape of your jigsaw puzzle piece (claim) is not immediately obvious in view of the shape of the neighboring pieces.  In fact, a big part of the patent examination process is negotiating the extent of this gap, and how best to amend the claims accordingly.

USPTO office actions

USPTO office actions
USPTO office actions

USPTO office actions are used to reject most patent applications by using “done before”, “obvious”, “vague”, or “not patent eligible” type arguments.

Although we all hope that a patent application will sail through the USPTO patent examination process and be allowed “as is”, this usually doesn’t occur.  As a practical matter, examiners work on a quota system. The net effect of this quota or “count” system is that the average successful patent is usually rejected several times before it is allowed.

Typically an examiner will first read the patent claims, and search for various citations (often earlier filed patent applications) that match certain claim key-words.  The examiner will then write a 20-40+ page “office action” document that rejects your various claims for various reasons, and send it to the correspondence contact of record.  The examiner expects you to respond within three months by submitting a written “office action response” that rebuts these various rejections.

The most “popular” USPTO rejections are:

Done before – 35 USC 102: The examiner thinks he has found another single citation that teaches everything in your particular claim. However absent actual copying, no two patents are usually totally alike. This type of rejection can often be rebutted by explaining where the citation is different, or amending the claims to add additional detail that differs from the citation.

Obvious – 35 USC 103:  The examiner (sometimes impermissibly guided by your disclosure) is attempting to reject your claim by combining features from multiple citations. The examiner may often create a Frankenstein concept that may or may not be plausible. Fortunately, there are examination rules here. Often this type of rejection can be rebutted by any of 1) showing that the examiner is misquoting the citations, 2) amending your claims, 3) showing which “103” examination rules were broken.

Vague – 35 USC 112:  This “vagueness” or “indefinite” type rejection is used for different things. Sometimes it is harmless and easily corrected, such as when the claim’s grammar is off. Sometimes it is deadly, such as when your underlying patent application doesn’t teach how your invention works in adequate detail.  This is more likely to happen if the original application lacks specific examples.  Although this can often be rebutted or fixed by changing the claims, sometimes the only way to attempt to fix this is to file a “continuation in part” application that adds the missing detail.

Not eligible – 35 USC 101:  In the old days (i.e. before 2015), this was a rarely used rejection because the 35 USC 101 law was written to be very expansive. However, recent court decisions have made this area quite a swamp, and this is still being sorted out. In the meantime, realize that business methods and financial methods have a higher than average rejection risk.