Attachments
  
  
Announcement Description
  

​Please see the slides presented and the report of the committee from the annual meeting at the link http://www.aipla.org/committees/committee_pages/Industrial-Designs/2012%20Annual%20Meeting%20Papers%20%20HandOuts/Forms/AllItems.aspx

  

Last week (5/29/2014), Prof. Mark Lemley and 26 other law professors filed an amicus brief in Apple v Samsung, objecting to section 289 and design patent law’s requirement that a defendant pay the entire profit from the infringing design rather than apportion profit like utility patents, copyrights and trademarks.

The brief and Samsung's Federal Circuit brief are available in a Library on the left of this page, at the bottom of the Libraries list.  We've also posted a Committee Discussion - link again at left.  Comments are anonymous.  Please join the discussion, and thank you!!

 
  
  

October 10, 2012, at 1:00 Central Time  Conference Dial-in Number: (605) 475-4000  Participant Access Code: 546789#

The ID committee's new subcommittee on customs   enforcement will host a committee-wide conference   call on allowing U.S. design patents to be recorded   with Customs and Border Patrol (CBP).  Currently   only copyright and trademark registrations are recordable with CBP.  The sub-committee will summarize the   issue and present a proposed Board resolution, on   which the committee as a whole will vote.  This vote will likely open on October 12, 2012.  We will announce the vote separately.

This topic was discussed at the Spring Meeting   in Austin.  Various documents gathered and   prepared by the sub-committee are on the ID   committee's website (documents page) for your   review, including AIPLA's 8/10/12 Public Comments   to the IP Enforcement Coordinator's Call for   Input on Its Draft Strategic Plan.

Special thanks to several new members who have been quite active on this issue in the new sub-committee:    Corey Beaubien, Gregory Bennett, Carine Doyle,   Donika Pentcheva and Rebecca Pumphrey.

Please join us!!

Damon Neagle, Chair
Garfield Goodrum, Vice-Chair

  

​See the link under Surveys to the left.  Thank you!!

  
  
  

Discussions of Hague, 3D Printing
and In re Owens - call in info to be posted​

  

http://www.fryer.com/​​

  

​The argument is available at the CAFC website:

http://oralarguments.cafc.uscourts
.gov/Audiomp3/2012-1261.mp3

  

Be sure to check out the DOCUMENTS link on the left for ID
materials of interest.  In addition​ to In re Owens, DP recordal
 at Customs and Fashion Bill, we've posted new articles re
Hague from members Hal Wegner and Rich Stockton.

  

We reached a quorum yesterday on the Committee's draft
resolution to the AIPLA Board for recordation of US design
patents with CBP.  The resolution passed 36 to 1.  
The Committee will send a representative to the Board
meeting on 12/10/12 to formally present the draft resolution
with our recommendation that the Board adopt it.  
Thanks to everyone who voted.

  

I would like to thank Rick Neifeld for bringing this matter to light. 

As is laid out in Rick’s email below, there is a potential issue with 

design patent applications and the new declaration rules.   The problem 

is that on its face the USPTO rules for the new declarations apply to 

applications filed in under 35 USC 111(a) or 363.   

A design patent application is not filed under 35 111(a) (nor is a reissue 

or a plant patent application).  


The statute that requires the new language clearly applies to all patent 

applications.   A copy of the statute and the rule will be posted on the 

website shortly for members review.   So clearly by statute you have 

to use a declaration with the “new” language, but according to a literal 

reading of the USPTO’s rules, you still need to have an old language 

declaration in a design case.  


We will be following up with the USPTO to see if/when a clarification of 

the rules will be published.  It is, of course, anybody’s guess what a 

court would do about this issue.  But the paranoid practitioner may want 

to create a declaration with both sets of language and/or have the inventors 

sign both types and file them both in the case.


Margaret Polson

Incoming vice chair of the Industrial Design committee

 

On 8/30/2012 10:54 AM, RICK NEIFELD wrote:

The USPTO promulgated the final rule "Changes To Implement the Inventor's 
Oath or Declaration Provisions of the Leahy-Smith America Invents Act".  
77 FR 48776 (2012). That rules package contains an "Applicability Date" 
provision that reads: "Applicability Date: The changes to ... [a bunch of, but 
not all of, the new rules], apply only to patent applications filed under 35 U.S.C. 
111(a) or 363 on or after September 16, 2012."  However, there is an issue of 
the applicability of certain of these new rules, of which everyone should be aware. 
 
The "Applicability Date" provision means that "The changes to..." some of the new 
rules are only conditionally applicable, and only apply "to patent applications filed 
under 35 U.S.C. 111(a) or 363" for applications filed on or after September 16, 2012.
 
I find that the condition "patent applications filed under 35 U.S.C. 111(a)" to be 
a significant problem in squaring which rules apply to which applications.
 
After research, my understanding of the phrase "filed under" in the context of 
patent law and practice refers to a grant of authority.  For example, design applications 
are "filed under" chapter 16.  See 35 USC 122.  35 USC 154(b) indicates that 
applications "filed under 111(a)" exclude design and plant patent applications.  
35 USC 351(c) indicates that "filed under" means a PCT application.  
The CAFC has also referred to applications "filed under" to mean a reference 
to the statutory section granting authority to a party to file the type of application 
at issue.  Cf. In re Beineke (plant application "filed under" 161);  In re Weiler 
(reissue application "filed under" 251)
 
 There is a contrary line of reasoning and analysis, which suggests that "filed under 
35 U.S.C. 111(a)" is more expansive, but it seems to be a weaker line of reasoning, 
but for two factors.  First, some of the rules, such as those directed to a change in 
reissue application practice, would never go into effect if "filed under 111(a)" does 
not include reissue applications.  Second, my discussions with OPLA personnel in 
charge of rule drafting indicate their belief that "filed under 111(a)" is, or was 
intended to be, more expansive. 

I have just conferred again with OPLA personnel, and I know that they are now cognizant 
of this issue. Moreover, OPLA personnel indicated that they intend to review and 
consider some official clarifying statement as to the "Applicability Date" provision. 
  

We will hold a conference call on Tuesday, June 5 at 3:00 PM Eastern to discuss U.S. implementing legislation for the Geneva Act of the Hague Convention Concerning International Registration of Industrial Designs, as well as whether U.S. design patents should be recordable with U.S. Customs and Border Patrol like design copyrights, copyrights and trademarks.  Both topics were discussed at the Spring Meeting in Austin, including at an informative meeting between AIPLA and WIPO Senior Counselor Alan Datri. 

Jason Somma, chair of our legislative sub-committee, will briefly present on Hague, and Prof. Bill Fryer will provide his usual sage observations and recommendations.  We would also like to form a sub-committee to bring the Committee’s 2009 DP recordal work to completion by preparing a formal resolution and undertaking a Committee-wide vote to be presented to the Board. 

We have posted an initial memo on Hague from Jason requested by AIPLA, as well as several documents provided by AIPLA’s Special Committee on Legislation.  There is no telling when Congress could take up implementing legislation (the Senate ratified the Geneva Act in 2007), but the Committee should be prepared.  We have also posted the Committee’s 2009 document presented to the Board at the Spring San Diego meeting.

Please join us for the call on Tuesday!

Dial-in: 218-936-4700

Code: 6178529​

  

The Committee’s Resolution on HR 2511, the Innovative Design Protection and Piracy Prevention Act - the new fashion bill was presented to the Board at the Annual Meeting, and  the Board adopted the resolution with one amendment by a vote of 16 to 1. 

Following is the final text of the Resolution from our notes. 

AIPLA Board Resolution on H.R. 2511,

The Innovative Design Protection and Piracy Prevention Act

October 23, 2011 

RESOLVED, that the American Intellectual Property Law Association (AIPLA) continues to favor, in principle, enactment of fashion design protection.

FURTHER RESOLVED, that AIPLA supports enactment of H.R. 2511, Innovative Design Protection and Piracy Prevention Act, (Goodlatte), 112th Cong., 1st Sess. (2011), or similar legislation.

SPECIFICALLY, while AIPLA supports H.R. 2511, AIPLA recommends that:

  1. The definition of “apparel”  be non-limiting;
  2. A “closely and substantially similar” infringement standard be adopted;
  3. Any infringement test that approximates a “point of novelty” test be eliminated;
  4. Color be permitted as a consideration in determining the scope of protection of a fashion design;
  5. Notice not be required for recovery of damages;
  6. Sellers and distributors of infringing designs be liable for their infringement;
  7. Registration be required for fashion designs, with the power to enforce said registrations be vested to the Secretary of the Treasury and Postal Service;
  8. Fashion designs be immune from false marking liability, or in the alternative that standing to bring false marking suits be limited to the U.S. Government; and
  9. Design patents be permitted to co-exist with protection for fashion designs under the Act.
  

We will hold a call this Monday, October 3, 2011, at 3:00 PM EDT to update the membership on the ID Committee’s efforts regarding the pending Fashion Design Bill (H.R. 2511 aka "Innovative Design Protection and Piracy Prevention Act").  We have received a number of very good comments to date, and are preparing to vote on the Committee's position, which will be presented to the AIPLA Board of Directors at the Annual Meeting.

We will discuss the draft resolution during Monday’s call.  Feedback generated from this call will help determine which provisions are most critical, and assist in finalizing the resolution.  We will also discuss any further comments that the Committee should consider.

See the Committee Documents page for working documents.

As a reminder, the hearing video and written testimony can be viewed at the Judiciary's website. View the video now
 

To call in:

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