Design Patents: Building Better Moats

When most people think or speak generally about patents, they’re really talking about utility patents – or patents that are primarily concerned with how an invention is used and how it works. But as it turns out, this is just one specific type of patent on the complete menu of options available for protecting your innovations. Another option, called a design patent, exists to – additionally or alternatively – protect the appearance of your invention. 

And whether you find yourself in an either/or or a both situation, it’s important to consider all tools at your disposal in covering every uniquely protectable functional and visual aspect of your inventions. This is often referred to as building a moat around your business. In this month’s IP Market Insights Newsletter, former guest of the podcast, Louis Carbonneau, wrote that:

"Morningstar’s research has consistently shown that companies with wide economic moats — those with defensible advantages expected to last 20 years or more — dramatically outperform those without. When Buffett said he looks for 'economic castles protected by unbreachable moats,' he wasn’t being quaint".

** Episode Overview **

Design patents play a critical role in your broader portfolio and in making your moat as wide and unbreachable as possible. This is why we’ve enlisted the help of our very own Dr. Tiffany Miller to guide us through all of the do’s and don’ts. As you’ll hear today, Tiffany has some very unique and practical insights into how even the most nuanced aspects of design patents can significantly impact infringement cases.

⦿ The definition, term, and features of design patents.
⦿ How design patents compare with utility patents.
⦿ Obviousness implications for the patent office and the courts – including what to possibly make of the courts wiping the case law slate clean on design patent obviousness back in 2025.
⦿ And some really great interactive panel discussions around real-world design patent examples and how courts have weighed in on patentability.

** Mossoff Minute: Loss of American Leadership  **

In this month's Mossoff Minute, Professor Adam Mossoff discusses the unfortunate loss of American leadership on the international stage in terms of defending the fundamental rights and rules for how we protect patents. 

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Transcript

Josh: [00:00:00] Good day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting this for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're talking about design patents.

When most people think or speak generally about patents, they're really talking about utility patents. Or patents that are primarily concerned with how an invention is used and how it works. But as it turns out, this is just one specific type of patent on the complete menu of options available for protecting your innovations.

Another option called the Design Patent exists to additionally or alternatively protect the appearance of your invention. And whether you find yourself in an either or or a both situation, it's important to consider all tools at your disposal in covering every uniquely protectable, functional and visual aspect of [00:01:00] your inventions.

This is often referred to as building a moat around your business. In this month's IP Market Insights newsletter, former guest of the podcast, Louis Carow, wrote that Morningstar's research has consistently shown that companies with wide economic moats. Those with defensible advantages expected to last 20 years or more dramatically outperform those without, when Warren Buffet said he looks for economic castles protected by unbreachable moats, he wasn't being quaint.

We couldn't agree more. Design patents play a critical role in your broader portfolio and in making your moat as wide and unreachable as possible. This is why we've enlisted the help of our very own Dr. Tiffany Miller to guide us through all of the dos and don'ts as you'll hear today. Tiffany has some very unique and practical insights into how even the most nuanced aspects of design patents can significantly impact infringement cases.

Tiffany's a patent strategist here at Aurora and is making her patently strategic hosting debut, leading [00:02:00] today's discussion with our all-star patent panel, delving deeply into all things designed patents along the way. Tiffany and the panel discuss the definition, term and features of design patents, how design patents compare with utility patents.

Obviousness implications for the patent office and the courts, including what to possibly make of the courts wiping the case law slate clean on design patent obviousness back in 2025, and some really great interactive panel discussions around real world design, patent examples and how the courts have weighed in on patentability.

The conversation starts with a lively panel icebreaker on design, patent eligibility involving tattoos and the Statue of Liberty. These don't always make the final episode edit since we primarily do them for our guests, but this one was particularly good discussion and really helps to set the stage for much of what's discussed throughout the remainder of the episode.

Tiffany's joined today by our always exceptional group of IP experts, including Dr. Ashley Sloate, president and director of Patent Strategy at Aurora. Dr. [00:03:00] David Jackal, president of Jackal Consulting, Kristen Hanson, patent and strategy specialist at Aurora Albert Dew, patent and strategist at Aurora And Marie Smith, patent agent at Break Hughes Erman, LLP.

Now, before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Patent Dewars episode, and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform.

Significant court rulings, innovation policy happenings, and occasional Star Wars references. In this month's minute, Adam discusses the unfortunate loss of American leadership on the international stage in terms of defending the fundamental rights and rules of how we protect patents month in and month out.

Adam paints a very vivid picture of what I think can best be described as economic suicide if we don't course correct. In the coming months, we'll also explore how the systems attributes that are under constant attack are the very ones that gave rise to its profound success. It's easy to get lost in the [00:04:00] barrage of noise we're bombarded with daily, but these are some of the most important things that not nearly enough people are discussing.

Professor Mossoff: When we often think of American global tech leadership, we often think of the technologies themselves, the fact that more than half of all new drugs are invented in the United States, that our smartphone technologies like 4G and 5G come from inventors in the United States. And so we think in terms of the technology itself.

There's an important aspect to this leadership that people often miss, that the system that made these technologies possible. Our patent system is also just as important, and we have been a leader in that as well. We were a leader from the very beginning of our country in securing patents as property rights and a rule of law.

By protecting innovators with injunctions and with full damages when their rights are infringed, just like all other owners of land and other types of property rights. But all of these rights have been seriously weakened and even eliminated in many respects. So the United States [00:05:00] Patent system is now at a low point, incredibly weak.

It doesn't provide the types of protections that historically has secured, and thus. The protections in innovation have moved overseas to other jurisdictions, to Europe and to China, and this is now where all of the patents are being issued, and even importantly, where litigation is occurring. So the United States is no longer setting the terms in terms of actual.

Rights and rules for how we protect patents. We have lost our technological leadership in the patent system itself. This is incredibly important because with this loss of leadership comes a loss of the norms of America, rule of law, protection of property rights, transparency, democratization of invention, all of the things that made the United States patent system successful.

Stay tuned for more. 

Josh: Thanks Adam. We're also publishing clips from the Mossoff Minute as short form videos on Instagram reels, YouTube shorts, and TikTok. [00:06:00] You can check out these shorts and follow us at Aurora patents on all three platforms. And now without further ado, take it away Tiffany. 

Tiffany: All right. We'll get your seat belts on 'cause this is gonna be a wild ride here. Um, this, um, this picture was, um. I had to, I had to do a search for, um, big burly biker with tattoos.

So just tell Josh when he finds that on my browser history that it was, 

Ashley: you don't have a thing for bikers with tattoos. 

Tiffany: It was, it was for, for research, um, and development for this, uh, presentation here. Um, but here's a nice question is, is a tattoo an ornamental design that can be protected with a design patent?

Um, [00:07:00] or does anyone have any, um, opinions on that? 

Ashley: I think copyright, yeah, 

Al: that's what I always think first, but, 

Tiffany: but I don't know. Not 

Al: sure about the 

Tiffany: other side. Okay. Yeah, it is. Yeah. So you cannot patent that because it is not on an article of manufacturer, it's on a user skin, so it could be protected under copyright.

So I thought that was kind of interesting. 

Ashley: It is. Yeah. 

Tiffany: Yeah. Oh, I, 

Ashley: well, maybe in the future when robots get tattoos, you can do design patent because it'll be on an article of many 

Tiffany: SI know. Absolutely. Well, I was, I was actually thinking about temporary tattoos that are, you could seek patent design, patent protection on a temporary tattoo because it's disposed, the design is disposed over.

You know, if the film 

Ashley: Yeah. 

Tiffany: The layer of film that can then [00:08:00] that be applied to your skin. So a temporary, like the kids' tattoos. 

Kristen: Yeah. That's an article manufacturer. Yeah. 

Ashley: Huh. 

Tiffany: Yeah. And actually 

Ashley: like on the side, look that up. Yeah, if somebody ever did that. 

Tiffany: Yeah. I started, yeah. So like my mind kind of went on from there and I needed to refocus, but, um, it's interesting to think about.

Okay. And the next one, so is the statue of Liberty's ornamental design eligible for design patent protection?

Ashley: Then I'm gonna say copywriting in or whoever. 

Al: I, I would think so. For design. Well, not at this point, but true. 

Tiffany: So, so, um, Al is thinking you could get a design patent for the statue of liberties design. 

Ashley: It's Oracle manufacturer, I guess. So probably 

Tiffany: press, 

Kristen: it's a [00:09:00] drawing originally, I suppose. And that would be copyright and then you build it.

Yeah. 

Tiffany: I don't know Anyone else? Let's see. Um, who else didn't, Dave? 

Dave: It seems like it's a work of art to me. Like so the original, anyway, uh, like a sculpture. So maybe not, maybe it's like a copyright thing. 

Tiffany: Okay. And Marie, 

Marie: I have no idea. 

Tiffany: Any comment. Okay. So this actually is an image from Design Patent 11 0 2 3.

And it was, has a design patent. Mm-hmm. Um, from 1879. So the Statue of Liberty is, was protected. It's currently not because it's exceeded. Um, time limit. Um, however, yeah, it was, um, had a design patent, so I never knew that. I thought that [00:10:00] was kind of neat. 

Al: Yeah. That is me. 

Tiffany: You learn something new every, and you know what?

Happy 

Birthday 

Ashley: America two 50. 

Tiffany: I know, right? So you'll never think of the, um, the Statue of Liberty again without ha knowing that it wa it was, uh, design protected. 

Ashley: I just posted the tattoo. Tiffany, your, uh, there was, there I found at least one design patent for what they called like a, how'd they call it?

Like a tattoo, a temporary tattoo cover. And it looks to me like they are temporary tattoos that you could place on the skin. Oh wow. I dunno. 

Tiffany: That's excellent. 

Ashley: There you're, it, it does exist. 

Kristen: Yep. So would you ever suggest this to like a sculpture artist? You know, would you say maybe you should get a design on this.

This is really interesting and different, and eventually you're gonna sell it. I mean, I would think it would be on replicas that you would care. 

Ashley: Yeah. I mean, it'd be more powerful than copy. I mean, [00:11:00] copyright has longer term. 

Kristen: Sure. 

Ashley: Right. Yeah. But you could do copyright and design. It could be if you really, if it was gonna be something like highly valuable, potentially, you know?

Al: Yeah. 

Kristen: Yeah. I don't know. 

Tiffany: Alright, so the definition of a design patent. So a design is typically the surface ornamentation applied to an existing article of manufacturer. So. The design is, well, the patent office uses the word embodied. The design is embodied in or applied to a surface of that article, and it's not the article itself.

And a lot of times when I speak with clients and I have to break that down to them, what exactly does that mean? I always, I I, I always say, for example, if you have a backpack and you wanna add a smiley face to the backpack or something like that. So you have your article of manufacturers, the backpack, and you're adding your [00:12:00] design a smiley face.

Now whether that's you, you're going to distinguish from other backpacks with smiley face, depends on, um, what the smiley face looks like. And that's another, we'll go into a little bit more detail on that. But, um. Also, I will mention that cowboy hats, for example, um, that's an example of the design being embodied in the article of manufacture, the actual shape of that cowboy hat, for example.

Also, the shape of a Pepsi bottle, for example, has a distinct shape or the shape of a mascara. I know that many of you may not, um, relate to this, but I know Kristen and Ashley and Marie maybe, um, a mascara bottle when you go into the makeup aisle and there's, you look at the mascara and they're all different shapes.

Those are actually protect, well, some of them are protected under design patent, believe it or [00:13:00] not. And, um, visual characteristics of a design. Um. Those visual characteristics that are embodied in that article of manufacturer are very important. Uh, so much that the claims, and I have a, a slide dedicated to, dedicated to this, but the illustration of the particular visual characteristics are used to determine the patentability and also will be heavily scrutinized during potential validity challenges and, uh, infringement cases that will go into, uh, I hear you have here manifestations in appearance.

The subject matter may relate to the configuration or shape of an article, which I had briefly noted, uh, previously, uh, to the surface of, uh, [00:14:00] surface ornamentation. That's the example of if you were to apply a, an, an image to a t-shirt or backpack, for example, or to the combination of, um, of both. So I think sometimes people forget that you could combine the, um, the shape and surface ornamentation together and, um, that is distinguished between the, the lines, the dash lines are solid lines of the, um, application.

And I can go into a little bit more details. 

So when you have, when you go to file a design patent, you really need to understand that it's protecting the way something visually looks, not the function. If you file an application, uh, a design application.

And really it's, it's a functional item. If you try, I don't know, [00:15:00] maybe someone wants to try to cut some corners and save some money by filing a design and they a design application and they really have functional. Um, characteristics, um, we're gonna find out what ha what has happened to those, um, at a Supreme Court level.

But for now, uh, because the design patent protects the visual appearance of an article and, and not the function that needs to be conveyed to the patent office. Um, and not only to the patent office to determine patentability, but to a judge during any kind of infringement matters. So that's where the drawings of a design patent application become very important in that the solid lines will define the claimed invention, and dash lines will show more the environment or something that has already existed.

So the new matter, [00:16:00] the important portion should be in solid lines. So. So the solid lines are only what is protected and show only what is to be claimed. And, um, also keep in mind that the scope of protection is determined by the overall visual impression of those claimed portions, which, which again are the dashed lines.

So it's fairly, it's actually fairly simple. And then if you do feel the urge to go in there and elaborate some functionality in there, you better believe based on experience that you will receive a rejection and you'll have to rewrite the, um, the specification. And so it's, you know, you have to really, as a practitioner, separate the, um, the need to.

Wanna elaborate more and you just have to [00:17:00] let it just stay focused on illustrations, only

obviousness for designs. I know Ashley sent over a really nice article earlier today and so I incorporated that in here. And, um, it says that there was a recent rule change and, um, obviousness of design patents now follows the same framework as the utility patents. Um, based on those gram factors of eligibility.

Um, that, uh, typically have been implemented. The analysis analysis focuses on overall visual impression from the perspective of an ordinary designer using analogous art and the decision increases the flexibility, but creates uncertainty around analogous art motivation to combine and secondary considerations.

Ashley, was there [00:18:00] anything, um, that you, um, wanted to, 

Ashley: this is like a big, you know, this is in earlier 2025. It was the big kind of, um, upheaval of. Design patent space because they had relied on that rose and darling primary reference test for a really long time. And then for the federal circuit to kind of come in and say, that doesn't matter anymore.

We're gonna do it for, you know, design patents. Uh, we're gonna do the same obviousness for obviousness tests, for design patents as we have historically done for utility patents. Just really kind of upended, you know, the design patent side of the world. Um, and has really left a lot of ambiguity because, um, we don't have case law for that, right?

They've kind of wiped the slate clean for case law. I mean, you could look to utility patent case law, but that's different, right? You're arguing functionality, structure and function. And here, as you've mentioned here, Tiffany, I mean it's all surface ornamentation and appearance and visual characteristics.

So, um, [00:19:00] it'll be interesting to see as more case law comes out about design patents, how this new standard will be applied. You know, by the courts at least. Right. And that will inform probably how well the patent office applies it. So I dunno if anybody else has anything to add. I dunno if anybody's really, I mean, I don't think we've seen any office actions for design patents since this interpretation came out.

Um, but we should be getting more, so it'll be interesting to see how, how that's looking in office actions prepared by examiners. 

Kristen: Yeah. Maybe that could be our next, um, discussion in journal club. 

Ashley: Yeah, we 

Kristen: could find one. 

Ashley: Yeah. Or later. Yeah, maybe later, 2026 or something. There'll be maybe one or two or something.

Well, this is the hard part too. Again, I mean, less so because to your point, Tiffany, design patents are very, they're very light in terms of language, right? It's like, here's the perspective view of this. Here's the backside view of this, here's the top view of this. [00:20:00] You know, so there's not like as much crystal balling that needs to happen in drafting design patent.

I think bigger, but the bigger impact is if you'd asked certain lines and made certain lines solid based on the Rose and Darling test. And now that test has, now the test has changed. Would you have done different claiming in the designs had that been the test? You know, now I, and I, I don't know. I think it's interesting, but yes, I think it's a good, good thing to follow up on as some case law comes out.

Kristen: Yeah. 

Tiffany: Thanks Ashley. Okay. 

And I know we, I briefly mentioned term of a design patent, however, there were a couple different terms. The applications filed on or after May 13th, 2020, 2015, have a 15 year term from the date of grant and the applications filed. Before 2015 had [00:21:00] a term of 14 years, so it's not the 20 year term as a non-provisional utility application.

So it's a little bit shorter.

Uh, there's so, and there are distinctions between design and utility patents. So the utility patents are protect or prevent others from making, using, selling, importing into the United States. The invention as it pertains to functional, how it, it's made structural components or methods of using or making an article.

Manufacturer. So it really is honed in on the function while the design is, is honed in on how something looks. And by something, an article of manufacturer, the, I know that we [00:22:00] already had mentioned shape and configuration, surface ornamentation or parts of a design, uh, that don't necessarily come into play in a non-provisional utility because you could draft the claim is broad enough to where the shape of something really doesn't matter.

You could just, you know, for example, circuitry retained and a housing. So, and, and just use a generic housing or maybe not even mention a housing in your claims. Uh, whereas design really focuses on. On that housing, for example, or, or the way in which that, uh, article a manufacturer is looking. And you could, um, design and utility patents may be obtained on an article if the invention resides both in utility and ornamental appearance.

Uh, I've had clients that have filed for both, uh, design patent and [00:23:00] utility patent. And it, it does, the design patent does serve a purpose and it could be valuable to expand the portfolio. I think it's a really good idea in some cases to make sure that you cover all your bases by filing both a utility and a design, not just a design in some cases.

Um, but it's, if you really want to make something. Your own by the way. Something looks, if you were to look at, at something and um, have, for example, the crux. You know, if you were to go to a store and you look at a pair of shoes, you, a user would know that, hey, that really soft, squishy, comfortable, I'm from Florida, every y'all.

So that comfortable slide, that's a crock. Okay. I, I could spot a crock a mile away. And that, and, um, the company does have, um, many design [00:24:00] patents on those crocks. So you would know that. Um, and you might think that a shoe does have utility to, and, and there are companies that do file patents on, um, certain features that, that may be in a shoe.

So you could seek protection on both. 

Ashley: I'm just gonna clarify that when you said you could spot a crock, you meant. A shoe and not a crock. 

Tiffany: Yeah, but 

Ashley: those are also exhibit, that's a good 

Tiffany: one. 

Ashley: I mean, maybe you could spot a crock too. I mean, hopefully not got to, but 

Tiffany: Oh yeah. Okay. So here. Okay. Pop quiz everyone.

I hope everybody, I hope Marie is really paying attention over there because this is a pop quiz is a key eligible for there. She's is a key eligible for design patent protection. Now we're gonna start with Ashley. 

Ashley: I think [00:25:00] the head of it is because the head is not functional, but the body of the key is very functional for engaging the lock.

That's my two 

Tiffany: sentences. I like that. I like that Dave. 

Dave: Yeah, that was my exact thought. You see these tops of keys that are shaped like an animal or, you know, whatever some design could be, but not the, the, the, 

Tiffany: the 

Dave: key part. 

Tiffany: Okay. Kristen? 

Kristen: I would say maybe the top and maybe one other edge, A non-functional edge, but I'm not sure.

Tiffany: Okay. Al 

Al: Yeah, I'm, I'm with everyone else Gu. Same. I, I kind of feel like, you know, even the functional sides, maybe there's a way to, uh, determine the groove depth or something like that. That's like a little bit more design related, but who knows. 

Tiffany: Murray, do you have any, any, uh, comment? 

Marie: Yeah, I, I, I think the top and I think that, [00:26:00] um, certain lock manufacturers, you can kind of tell their keys from others because of how they do that top.

Somewhat, right? Yeah. I think we, we've seen that. Um, so and the, 

Tiffany: okay, well, 

Marie: key part of it's functional, right? 

Tiffany: Yeah. That's excellent observations. And, um, there was a federal circuit 1996 case that holding a design of a key is not patentable because it was dictated by its function or the design of the portion that's configured to engage the lock.

I, we should, you know, it doesn't go into detail about what you've all brought up, which is a very good aspect. The, the portion that is con of a key that's configured to be grasped by a user could very well [00:27:00] be the portion that, um, could, could be designed. Protected. Um, however, in this 1986 case referring to the, um, the actual lock portion of the key, um, the design of that portion of the key corresponds to a lock and it's, that's portion is not patentable because it's function.

Alright. How is a key similar to a toner cartridge? Does, does anyone have any knowledge of what a toner cartridge is? Does anyone know? Yeah. Does anyone wanna, does anyone own one?

Kristen: Yeah. 

Dave: Yeah. It interface, the toner cartridge has to interface with the printer. So it has to sort of like, uh, have this lock and key mm-hmm. Mechanism in a way. 

Tiffany: Exactly. There 

Kristen: are lot, lots of ornamental aspects to these toner cartridges that are not functional. So I'm guessing there [00:28:00] are pieces that could be designed eligible.

Tiffany: Okay. So we are going to really dive deep into this because I, I have some background on this. Um, one more question. Is the toner cartridge designed? If there was a design patent on it, is it likely to withstand a litigation you think?

Dave: No idea. 

Marie: I get, yeah. So a toner cartridge has to be designed to be a able to fit within a printer, right? 

Ashley: Yep. 

Marie: Yeah. And it can, it can be encased in, in whatever, but I be I, my thought and how it's different from a key is that case that. Houses the toner cartridge or the whole piece itself has to be shaped a certain way in order to fit into the printer.

Right. And, and so when it uh, comes to the [00:29:00] key, the part of the key that's gotta go in and fit in the lock to, to unlock it mm-hmm. 

Kristen: Is 

Marie: the functional part. But I mean, realistically you could have like a big ball on the end of, you could do anything on the end that doesn't have to engage with the lock.

Right. It could pretty much be anything. 

Ashley: It just has 

Marie: to be co no constraints. 

Ashley: Yeah. It just has to be complimentary to the printer. 

Marie: Yeah's gotta be so the tone of cart just has to fit. I can't put the, I can't put the me the toner in there to walk into the printer. I don't, you don't have, for the whole piece, you don't have unlimited constraints.

'cause it's gotta fit in. 

Ashley: Just on the one side. To your point 

Dave: that, that really reminds me of a super interesting story about design patents that somebody once told me an automotive. So a lot of these automotive companies, when they design their engines, now they make all these parts like a [00:30:00] jigsaw puzzle.

So it might just be like an air intake, but they shape it like an L with this weird flange and blah, blah, blah. So that, and then they get a design patent on that shape because it's non-functional, it's ornamental and then no third parties can make parts that fit in that car. 

Al: Right. 

Dave: Exactly. What Marie just saying 

Tiffany: work around, 

Dave: I don't know, I don't know how common that is or like if it that holds up in court, but somebody was ex was telling me that about a design patent at one point.

I, I thought was very interesting. 

Tiffany: Oh, wow. Yeah. So we're gonna find out the answers to this question very shortly, um, in this, uh, Lexmark International versus Static Control Components Inc. Case that made it to the Supreme Court. And, um, a little bit of background, who Lexmark is. Maybe some of you have heard about Lexmark.

And Lexmark is a company that [00:31:00] sells toner cartridges. For their printers. And they typically, they make a lot of money off of it, and they have a recycle program where they want those toner cartridges back so that way they could clean them and resell them. However, third party manufacturers like static control started, uh, taking the exhausted toner cartridges, adding a new microchip on it and reselling them.

So Lexmark did not like that. And, um, there were a lot of litigations. Um, typically when you use a toner cartridge, the toner cartridge communicates with a printer via microchip, and that microchip has a time bomb in it, that after a certain amount of pages have been printed, the toner cartridge will not operate until.

You have replaced the chip, so it [00:32:00] won't work. You can't even refill the toner cartridge, um, on many of the brands. So, um, the, for the remanufacturer, they acquire the exhausted toner cartridges. They, they clean them, repair them, refill them, and add a new microchip. And we, my husband is the only Remanufacturer left.

He, he makes the microchips out of our Pinellas Park office. So this is actually a court case and it was, it took about eight years, um, went to the Supreme Court. It was a very eight to 10 and it just wasn't this one court case. There were several going on concurrently. So, um, I know a lot about this case here.

But, um, what happened wa was in this instance, Lexmark, they had some patents and there were two design patents on the toner cartridges. And [00:33:00] they were trying to say that, um, hey, we've got, um, design patent, and, um, you know, you can know they were trying to put all the re manufacturers out of business. And they first, their first, uh, way that they were trying to do that was saying that you, it's illegal for you to re to for you to, uh, sell remanufactured toner cartridges.

But one of the things that was brought up in this case at the Supreme Court level is that once you make a purchase for an item, you've exhausted that patent. So that allows you to take that item that you've, that you've purchased because you've exhausted it. You are free to do whatever you want with that item.

You can throw it in the garbage, you can give it to a third party remanufacture. That way they can clean it and recycle it, and then sell it for profit. So, um, but be they, because they weren't able to go that route, uh, they were a, they had the two design patents they [00:34:00] file. Even though that a toner cartridge is purely, uh, functional, it, it had to go through the Supreme Court to set forth that design patents that are issued.

Um, it, it's, they're issued to whoever invents any new original and ornamental design for an article of manufacturer. And they have to be patentable. In order to be patentable, the design has to be new, original ornamental and non-obvious. So if the design is essential to the use of the article, it cannot be the subject of a design patent.

And further, this, there is a court case and citation from that is, an article is less likely to be ornamental if it is not observed. And the federal circuit looks not just to whether the article is ever seen, but whether the appearance of the article may become a matter of concern at any point during the [00:35:00] article's, normal and intended use.

So because the toner cartridge is inserted into the, the printer during use, you really can't see it. So it's purely functional in that regard. There was a, a federal circuit case in 1990. Holding that, a design of a hip implant, uh, it, it could be patented because it could not be patented because even though it's not seen during normal use, the design was intended to be noticed during the process, um, of a, of the sale.

So that's kind of one of an arguments that they'll use. Oh, we, even though you can't see the, the article of manufacture, the hip implant when it's, um, put inside of a user, um, even though you can't see the toner cartridge within, retained within the printer during use, what [00:36:00] has happened is they're arguing, oh, well, we have a pamphlet, a catalog showing the item to a user, trying, you know, what went during the point of sale process.

And they were, um, during the court case, they were trying to say, Hey, we, we sent out brochures, um, the catalog and yeah, people are looking at the, the customers are looking at the visual appearance. And, um, that was shot down because, um. Even though you have an advertisement, the design of the cartridges are still primarily functional because the design of the printer is dictate, dictates the exact design of that cartridge.

And, um, in one of the federal circuit cases in 1996, they stated that holding a design of a key is not patentable because it, it was dictated by the function of its corresponding lock. So they actually, in this, um, black smartt case, they actually [00:37:00] used that, um, to teach the juries much like a lock and key mechanism.

The toner, cartridge, and printer relationship is, is the same. Um, and they even said that even though the cartridges may be seen at some point during their lifetime, such as during advertisements, at no point was their appearance a matter of concern to the end user. So that's really what, um, it came down to.

So it's of no concern even though it's illustrated in an advertisement. So, um, it's really important to make sure that you have, if you have a functional, um, design functional, um, device to make sure you file the correct patent application for it, especially if you think that you may be litigating.

Interesting. Okay. Yeah, so it is [00:38:00] interesting, um, onto the next item here. 

Duplex, horizontal receptacle. Um, does anyone, maybe, Kristen, do you have a, um, do you have any input?

Kristen: Okay. Design or utility? 

Tiffany: Yep. This is a, an outlet receptacle. 

Kristen: Okay. I'm gonna go with design because you really can lay out a receptacle quite differently than how you lay out each of the wiring behind it and the switch itself, you know, like the, the perimeter of it or the fact that maybe you're going to add a blank panel in, in a four up switch or a two up switch or something like that.

So I would go with, you can get a design on this. 

Tiffany: Okay. And you're at, Kristen is absolutely right. Uh, you can, and this is actually a picture of a [00:39:00] design patent, and it was actually issued, believe it or not. Um, the, one of the things that's, I had mentioned in a design patent application that you really need to make sure that you sh you have a broken line statement, um, that talks about what the lines, what the lines mean in your illustrations.

That way everybody has a clear understanding of, of what is sought as far as patent protection. They're going to be looking at the dash lines and the solid lines. 

Al: I'm surprised the plug outlets themselves are solid lines in this. I would've done. That's pretty 

Kristen: standard though, unless you go between 

Al: Yeah.

Kristen: Other countries, right? 

Al: Yeah. Yeah. But I mean, yeah, it just, I think 

Ashley: there's, you're allowed some functional components a little bit, right? Yeah. Because like life jackets, like that's, there's a case, [00:40:00] they're design patent case for that, right? Where you can get a design patent on a life jacket and you would need the overall, there were definitely, there's definitely elephants.

I think they claim that were functional, but more of it was ornamental or something. So maybe that's why they included just, 

Kristen: well, nobody would do it different than this because of safety reason either. 

Ashley: Right. But that's, but that's functional. I guess 

Al: what, yeah, the plug itself is functional, right? Like, 

Ashley: yeah.

So why would the face of it if 

Al: Yeah, just disclaim it as. With as dashed and then leave the rest solid. 

Dave: Oh, I understand. The inside, the inside of each of those plugs, the very, very interior is 

Al: dashed. Yeah. Is dashed. That's very much where you'll put, 

Dave: where the plug will go. But then there's that beveled area, and I guess that could be, be wider or narrower or whatever that are in the solid lines.

Oh, maybe that has something to do with it. Like that's a design choice, how far you bevel out or whatever. Okay. 

Ashley: Maybe. Well, yeah, so I think al the broader one would've been [00:41:00] without having those, I mean, but they needed it. 

Tiffany: So I, I checked this, uh, issued a design patent case out in detail. I reviewed the prosecution history and in the first office action it, they received a rejection because the broken line statement wasn't sufficient.

So you really need to make sure that you describe the purpose of, of what the broken lines illustrate in the drawing. So everyone has a clear understanding of. Where the patent protection is, uh, to be sought. Um, in the first office action, there was a 1 0 3 rejection and the examiner cited this, um, it looks like it's from QVC, this power strip, and, um, said that, uh, modification would be made they of the DeCosta device, um, in light of the secondary reference.

So if you were to modify the primary and secondary reference in such a [00:42:00] way that the appearance of the feature shown would suggest the application of those features, the, that's the examiner's rationale of the 1 0 3 rejection in this particular case.

So it's, I was really wondering how do you even go about arguing that? And, um, which led me to the clients had submitted an affidavit, um, kind of showing the examiner that the power plug looks like they say, looks at a distance, somewhat like a human face. And, um, this looks somewhat unnatural or uncanny.

Strangely familiar, unsettling, eerie. Like they actually used this in a formal document, um, to the patent office, which I don't advise doing because the problem with this argument here was the [00:43:00] word somewhat.

Because the examiner said that, um, they're not persuasive because somewhat is ambiguous and it needs to be reproducible. Um, so that the affidavit route did not work out in this matter, so in response to a second office action. Uh, they did have to, um, modify some of the lines to overcome the rejection. I saw that they did have an examiner interview.

Um, the examiner stated that an exact three dimensional appearance cannot be subjective or ambiguous. So I think rather than arguing and fighting with the examiner and submitting an affidavit or declaration, just, uh, you, you may have more success overcoming the 1 0 3 by changing the, uh, line dashes, for example.

Um, the [00:44:00] original, the applicant's original disclosure shown in this figure one here, they originally had, um, environmental lines, which was unclaimed subject matter. However, when they went in and they claimed. Um, they changed this illustration here. You'll see it, solid lines, and they claimed, um, that part of their invention and that narrowed their scope and it, and it was able to overcome the prior art.

Uh, that as well as, um, the thickness here. Um, you can see here that there's, um, in the original disclosure, the thickness is denoted by dash lines and in the actual allowed claims, the thickness here is shown in a solid line. 

Kristen: So I wonder if they could have got away with one or the other instead of both.

But I didn't look at the whole thing. 

Tiffany: They may have, um, yeah, they, that's certainly something that, you know, you could, they could have considered, um, as well. So, you know, that's, um, that was interesting, uh, for me to find out. Uh, one last, 

Ashley: this is my, just real quick on that, real quick on that, Tiffany. Yeah.[00:45:00]

Yeah. This is a good case. So to kind of show that Rosenberg. Darling test, uh, what, um, from the prior slide, you, like they said they chose a primary reference. And then, you know what? Because it easily modifiable by the secondary reference. And so you know that this is, you know, now we're shifting away from that analysis.

So it'll be interesting to see kind of how that looks in the next few years, right? Because that, how that examiner walks through that analysis is now will be changing, right? Mm-hmm. Um, 

Al: the ordinary designer test is a little questionable though. It's funny. Yeah. I don't know how that works. 'cause it's like there's, it's very strange.

Anyway. 

Tiffany: Okay. This is a design patent for sweater right during the prosecution history to overcome a prior art reference the applicant had submitted, um, all these lengthy arguments saying that, oh, well [00:46:00] the pocket is a certain size. It's, um, the size of like one third of a user's torso, and it has to be positioned to be disposed over this portion of the t. They went into great detail and yeah, they overcame the prior, the 1 0 3 rejection, they over, they got the issued patent, but when it came time to litigate, they couldn't enforce the patent because the prosecution history was used against them.

So that's why I'm saying even, even, even though you can submit an affidavit or declaration, um, to, for. You need to really stick to the facts and you gotta be careful about what you submit. And, uh, 

key takeaways. Design patents must cover ornamental, not functional features. Patent scope can be narrowed from dashed lines to solid lines, at least here in the US as shown in that one case.

However, I've had an experience with design patent in Mexico. They would not allow the scope to be, um, altered in, in a certain instance, um, but it's case by case. So you really need [00:47:00] to be careful on changing the scope, uh, with those dash lines. But here in the US and this in the, that, you can certainly narrow from, uh, dash to solid lines.

The US design patent application should be cautious about the arguments made during the examination phase to secure the applicant's allowance.

Ashley: For all, all patent applicants, right? Not design. What, what you say can and used will be, will be against you in the court of law. 

Kristen: One practice tip. Just remember your six month rules, if you file a US design application first, you have to do your foreign filing countries within six months.

Mm-hmm. And the reverse of that is also true. If you're gonna claim priority to like a foreign six month design patent, six months only, you don't get that full 12 months like you normal do, but 

Ashley: you also, but you still get the one year grace period for disclosures in the US for design disclosure. That is still a year window, but that does not apply to other countries.

[00:48:00] Um, so be wary of that too. 

Al: I, I think the Lexmark one is a little interesting where. We're using design patents to prevent confusion, uh, of products. And, and so like, it's very strange that that just because it's covered up, let's say the printer were clear or something like that, that, that it wouldn't, that, that, that design doesn't matter.

It is very strange. I'm not sure. 

Ashley: That's the first time I'm hearing 

Al: that 

Ashley: too. Yeah. A good thing to be aware of because, you know, if a client does have something that's basically meant to be covered all the time. Yeah. You know, kind of digging into the case file and making sure that you're making the right decision on whether they should file or not.

Um, so Tiffany was the hip implant, those were protectable because people were selecting more, or those weren't either because they were. They're given. Yeah. 

Tiffany: The, the hip implants were not patent, were 

Ashley: notable protectable. 

Tiffany: Yeah. They were not because the, even though it could be functional [00:49:00] in your body, right.

And just, just as though a toner cartridge could be functional within a printer, the visual appearance did not affect the user at a point of sale. So user wouldn't. 

Ashley: I think it would though, if you, if you've talked to hip implant people, you know, like people who have had hip implants. I think a particular client of ours who's had one recently, and like, I mean, he knows a lot about the orthopedic space.

Yeah. But he like literally went through and, you know, decided implants based on their studies, based on their visual appear, you know, based on all these parameters in the, the manufacturer. So I feel like that's a little bit of like a false, the courts are kind of falsely 

Al: Yeah. 

Ashley: Making assumptions about how consumers work and operate.

Al: Yeah, I agree with that too. Very strange. 

Ashley: I would do a lot of research about a hip implant. I'm just saying. 

Tiffany: Yeah. I think it's a certain, I think these court cases, there's [00:50:00] certain, this particular instance though, but there could be hip implants that are, so I guess it just depended on the scope of, of what they were seeking.

Ashley: Yeah. Mm-hmm. 

Marie: So, going back to the key, after we've gone through the receptacle, I'm having trouble with that because when you look at the receptacle, the placement of where you're gonna put the plug in, for lack of better description, has to be within particular functional constraints, or you won't be able to use it, right?

Kristen: Yeah. 

Marie: But the, the embodiment of it, right, was deemed design patentable. So with a key. Are there really constraints on how the upper part of the key is designed? Designed? 

Ashley: I 

Marie: don't 

Ashley: think so. 

Marie: Granted, the key part, you, it's gotta be [00:51:00] able to fit into the lock. Right. But you could really do, I mean keys, all those top pieces that were all different cars can have big mother plastic things on.

Ashley: I mean, literally trying to search design patents for a key. And I actually surprisingly, have not found one yet. I mean, there's a whole bunch of like key accessories and lock accessories, but I've literally been on the side trying to find a key, a key patent and design patent. And I, 

Marie: I'm having trouble with that one.

I can't, I, I don't, I wonder if there's some function, right? The receptacle thing they, yeah, I, yeah. 

Al: I wonder if there's some functionality with the head where. They are describing things, uh, like particular heads, like security keys, have a type of head or whatnot to, to kind of differentiate. But I, I don't know, that seems really 

Marie: smart or because it's manufactured as a single piece.

Yeah. Right. 'cause it is, you wouldn't put a, you wouldn't make the key with just the lock [00:52:00] portion and then the top. 

Tiffany: You know what I think we should do as an experiment, like a company wide experiment, I think that Aurora patent should try to file a patent, find patent on a key, and let's see what happens.

Like 

Kristen: the ball key. 

Dave: I think that word ornamental is really important. Like even all these examples we've been talking about and things that don't make sense, like if you really put a lot of weight on that word ornamental. Most visual aspects of a hip implant are not ornamental. Yeah. Um, you know what I mean?

But you could make a key True. You could make a key that had a big ornamental thing, or maybe it's like on a necklace, or you could absolutely make a key that has ornamental, you know, aspects to it, I think. Yeah. But, but maybe a lot of others wouldn't be considered ornamental if it's just a diamond shaped top.

Like, or the example that Tiffany showed, I don't know. 

Kristen: But what if it says schlog? I, you could prevent somebody from making that, you know, your key with your name on [00:53:00] it, 

Ashley: right? 

Dave: Yeah. Is there, and then, yeah. 

Ashley: Isn't there something I feel like I'm getting like a little bit of like a deja vu or something where, you know, like Kiki, if you only saw the line to the head and dashed the rest of it, it's not really an article of manufacturer.

Dave: Yeah. 

Ashley: Does that why? You know, woods? I feel like I've seen it before. No, I think, 

Dave: I think 

Ashley: like, um, like they, they reject if you don't have, if it's not 

Dave: so, like the Nike Swoosh or like the three lines of Adidas, so they show a sneaker, but the rest of the sneaker has dotted lines. The whole sneak, dotted lines and just the three stripes are the solid lines.

And that I think if I'm, if I'm, 

Ashley: yeah, 

Dave: think remembering it all correctly, it's not the whole article, it's an ornamental design on an article or as part of an article. Right. It doesn't have to be the whole article, 

Al: the location of those lines in the soup. Right? 

Tiffany: Yeah. And it as just the federal circuit. [00:54:00] Of 1996, the ruling, it says that the, it says the design of the key is not patentable because it was dictated, the design is dictated by function.

So like if you were to have a cowboy hat and it's in the shape, it was all curved, but it's not functional, it's just surface ornamentation. So like the curvature of the key is dictated by the function. 

Ashley: I found it guys. 

Tiffany: Yeah. 

Ashley: Second. You found one. I found one found upon the right key head. I put in key head.

Al: Yeah. This 

Ashley: is what we were 

Dave: thinking. There you go. Yep. 

Ashley: But there has to 

Dave: be 

Ashley: one. 

Dave: Yeah. And the rest of the key, the dotted, the, the part that goes into the lock is dotted. Right. And which completely makes sense. Mm-hmm. 

Ashley: Yeah. Although you do, I just found some other Ps. This looks like a car key that's fully, fully solid.

Um, so those won't stand up probably. 

Dave: Oh. Yeah, maybe those are right. 

Ashley: Yeah. Like, look at this one. This one's like fully solid everywhere. Here's another one. Um, so I don't think that one would stand up per, uh, Tiffany's case law [00:55:00] there. 

Al: Oh, 

Ashley: who knew? We could talk so long about keys. 

Kristen: I 

Tiffany: I know it's reping, huh?

Ashley: Yes. 

Al: I think the nice thing about design patents is they're kind of like stepping a foot into the soft side of ip and it's fun to mess around with that stuff. 

Ashley: Yeah. It's really, really last to, uh, develop. I mean, the spec man, 

Kristen: there's lots of mines. You don't wanna step on a mine. 

Ashley: Yeah. That, that is true.

Kristen: Thank 

Ashley: Tiffany. 

Kristen: Yeah. 

Al: Thanks Tiffany. Thank you. 

Ashley: Thank you, Tiffany.

Kristen: Thank you. Thanks, bye. 

Ashley: Thanks.

Kristen: Bye 

Ashley: bye.

Josh: Alright, that's all for today folks. Thanks for listening, and remember to check us out@aurorapatents.com for more great podcasts, blogs and videos covering all things patents, strategy. And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed.

Email us at podcast@aurorapatents.com. Do [00:56:00] remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.