Friday, September 30, 2022

Suffolk University Law School IP Center, Fourth Annual Intellectual Property & Innovation Conference

Panel: Design Patents, moderated by Sarah Burstein, Suffolk University Law School, panelists include:

Meredith Lowry, Partner, Wright Lindsey Jennings

John Maltbie, Director of Intellectual Property, Civil Enforcement, Louis Vuitton Americas

Darrell Motley, Shareholder, Banner Witcoff; Adjunct Professor of Law & Supervising Attorney for IP Clinic – Patents, Howard University School of Law

Burstein: What role do design patents play in LV’s strategy?

Maltbie: Looking predominantly through TM, anticounterfeiting as bread and butter. Design patents play a role when we have them, typically a handbag/jewelry/diamond cuts/chain designs/shoes. Always nice to throw in but not a mainstay of protection program. Issue: legal is often the last to know of new designs, so you need to know before the design is launched: need to explain that legal needs to be part of the process. Seems like a lower bar for entry for design patent than TM protection. Growing area for us; not core but nice to have.

Lowry: For many people/products, the first few years are the only years that matter, and design patents are a tool for that. [Burstein notes that you can pay a fee for faster prosecution, 4-6 months, even 60 days is possible.]

Motley: Useful when utility patent protection isn’t available. [Burstein: even when you don’t pay, design patents issue faster than utility patents. There is a lot of demand right now that is slowing design examination.] Apple v Samsung changed perceptions. [Apparently Shark Tank also talks about design patents.]

Burstein: what changes have you seen?

Lowry: people are now more likely to be aware of design patents when they come in. More partial designs. Interest in having more assets to tout to investors/venture capitalists.

Burstein: in the past, small inventors were sometimes diverted to design patents by skeevy methods (even though the design patent may have been broader in some ways than the utility patent); this may have contributed to the disrepute/neglect of the design patent regime.

Maltbie: they used to have a bad rap but that is changing/changed.

Q: important issues now?

Maltbie: Article of manufacture definitions, as Burstein has written about. Is the text that defines the article or is it the drawing? What you call it makes a difference—and can make a difference to anticipation as well. But manipulation of the description is then a risk.

Virtual designs: how do you get potential IP protection on the design patent side for designs that don’t exist in physical space? Can you enforce physical design patents against someone in the virtual space?

Lowry: you can file hundreds of embodiments and the PTO will say one design. You either dedicate all of those other embodiments to the public or you file another application claiming priority to the first. Pending design patents are not published. If that happens there’s no real way of knowing about submarine design patents. You get the first through and 99 more are pending. Any later designs aren’t based off the first dates—they’re 15 years from issuance, not filing. So in theory there are certain product packaging manufacturers that are essentially doling those out when they see their competitors starting to use a slightly similar design & they can push one specific design through quickly while the others continue pending. Potential for continuing for 50 years! She doesn’t have a good proposal for fixing this, but it’s open. [Why not shifting to application date as with utility patents?]

Burstein: would publishing design applications after 18 months like utility patents help?

Lowry: wouldn’t help with the child applications. Instead, would propose that child applications should be disclosed with issued patents so people can understand there’s still a risk.

Burstein: there are still children pending from the iPhone application filed in 2007.

Maltbie: would like to see more on enforcement: how close does it have to be? Attorneys in practice often like a multifactor test, whereas design patents seem more black & white. Consider My Other Bag: did design patent cover a 2D image of a 3D bag printed on a tote bag? Ultimately decided not to litigate that, thought (apparently wrongly) that the TM claims were strong enough.

Lowry: lack of an ornamentality threshold is a problem. You see things that aren’t designs but, e.g., slabs of granite.

Maltbie: with fashion designs it’s possible to miss your window—you can get a TM registration and have no one to enforce it against by the time it issues. One strategy we’ve seen: use design patent period to build secondary meaning, as happened with Coca-Cola bottle.

Presentation: High Hopes: Cannabis Trademarks at the USPTO, Rachael Dickson, Visiting Assistant Professor, Intellectual Property and Entrepreneurship Clinic, Suffolk University Law School

State-legal marijuana is widespread, but TM act requires lawful use in federal commerce. PTO policy: if record indicates that goods/services violate federal law, registration is refused. If currently unlawful, ITU will be refused where actual lawful use isn’t possible at the time of filing; applicant can’t have bona fide intent to lawfully use the mark. Refusals can’t be overcome if goods contain marijuana or intended for use with marijuana. After 2018 farm bill defining hemp as distinct from marijuana: Appropriate identification w/correct wording can allow hemp goods, but FDCA refusal may still apply even if Controlled Substances Act doesn’t apply b/c hemp can’t be turned to CBD for ingestible/medicinal/therapeutic use—but huge spike in CBD-related applications occurred as a result of 2018 change. False statements to PTO do occur and are bad ideas.

CSA doesn’t apply to clothing/ornamental matter, slogans, information about controlled substances even if it seems to encourage use of marijuana, marks for clearly legal goods (e.g. smoking cessation, drug testing), and marks that include “weed” or other references but don’t actually contain cannabis and say so in the ID.

PTO is checking specimens more closely, so even if you have magic words in your ID, if your specimen clearly shows therapeutic etc. use, it can be rejected. Generally approves fabric goods infused with CBD if they don’t claim medicinal/therapeutic benefits. W/r/t non-cannabis derived CBD, other cannabinoids, other drugs, the practice is sometimes inconsistent/evolving but also generally refused.

What’s next? After Farm Bill, applicants were allowed to amend to filing date as of first legal date for hemp sales and amending ID to meet the legal requirements. PTO is likely to move slowly and conservatively post-federal legalization; FDCA refusals still likely for many products unless marijuana is completely descheduled.

RT: Interested in reaction to Robert Mikos’s recent paper which would seem to attack the statutory authority for many of these rejections.

A: Generally agree with it but getting the PTO to agree is a very different matter.

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