DOES DESIGN PATENT LAW HAVE A FUTURE? You Betcha!

I will be speaking on The Future of Design Patent Law at the Intellectual Property Owners (IPO) Annual Meeting, which takes place online September 21-24, 2020.  The exact day and time of my talk has not been finalized.

Statutory changes in the design patent laws (35 U.S.C. 171 et seq.) are long overdue.  In fact, despite numerous statutory amendments to the general patent laws (35 U.S.C. 101 et seq.) there has been no change in the design patent laws in nearly 70 years, since the passage of the 1952 Patent Act. Such changes can address numerous gaps and deficiencies in the design patent laws, and update other sections of 35 U.S.C. (which were written for utility patents) to make it clear that design patents are governed under a separate legal regimen  (as one example, the requirement in 35 U.S.C. 112  that a patent disclosure must teach one how to “make and use” a claimed invention makes no sense when it comes to aesthetic designs). 

I will “introduce” legislation to address these gaps, deficiencies and inconsistencies, as well as improve the system for the benefit of users and the public.  The proposed new laws will also correct some poor judicial decisions that have wreaked havoc both in design patent prosecution and enforcement.

More particularly, my talk, and the legislation, will address such issues as:

*protecting the design, rather than the article of manufacture to which it is applied (as is done in Europe)

*defining “ornamental”

*defining “functionality”

*introducing a new Sec. 112 for designs

*providing for multiple claims in a design patent

*clarifying permissible amendments to the drawings

*defining design patent anticipation under 35 U.S.C. 102 to effectively overturn International Seaway 

*requiring consideration of the prior art in determining infringement

*updating 35 U.S.C. 289 re: total profit damages

*addressing miscellaneous issues such as inventorship, the manner of executing and amending drawings, the presence of logos/brands on the infringing product, and willful infringement.

It is believed that the virtual, online conference will draw from a large national and international audience, since travel expenses obviously need not be incurred. Don’t miss it.

The full program is here.