June 2014
Authored by Elizabeth D. Ferrill
You can probably tell this article is about girdles. And we will get there. But first, we need to back up a bit. One of the hardest things for applicants to appreciate is the paramount importance of quality drawings for a U.S. design patent application. Using drawings not specifically created with U.S. design patent filing requirements in mind—perhaps those filed with another intellectual property office—often fail to comply with U.S. practice.
The United States has an examination system for design rights, as opposed to a registration system like many other parts of the world. A U.S. Patent and Trademark Office (USPTO) design patent examiner focuses primarily on the drawings, which are therefore the root of many rejections.
The USPTO Manual of Patent Examining Procedure (MPEP) states that the "necessity for good drawings in a design patent application cannot be overemphasized."1Well-executed drawings will show the design clearly and completely so that, as the USPTO puts it, "nothing regarding the design sought to be patented is left to conjecture."2
As a result, the United States has strict requirements for design patent drawings. The drawings must be clear and typically have surface shading to show any three-dimensional contours of the design. Technically, while photographs are permitted, the USPTO regulations express a preference for line drawings. In practice, examiners often require photographs to be redrawn as line drawings because of the USPTO's limited ability to reproduce photographs in high quality in the final patents. Also, the USPTO encourages applicants to file as many drawing views as necessary to "sufficiently" show the design. A design, for example, claiming many concave elements on different sides may need additional views to adequately disclose the shape of these elements—in other words, the more high-quality drawings, the merrier.
In some cases, poor-quality drawings will prolong prosecution while the applicant corrects the drawings, making it much more expensive to get the patent issued. In the worst-case scenario, deficient drawings may sink the application entirely for failure to comply with the definiteness (clarity) requirements of 35 U.S.C. § 112. This happens when the examiner requires corrections to the drawings that may not be possible without adding "new matter"—meaning details not present in the original drawings. In that case, the applicant would need to file a new application, losing the original filing date.
This brings us back to the case of the inconsistent girdle drawings, recently decided in New York City—Times Three Clothier, LLC v. Spanx, Inc.3Plaintiff Times Three Clothier, whose product goes by the name Yummie Tummie®, filed suit against defendant Spanx, makers of a celebrity-beloved line of shapewear. Times Three Clothier alleged infringement of its three design patents directed to "garments"—essentially modern-day girdles. Spanx fired back that the design patents were invalid as indefinite (lacking clarity). For two of the design patents, the court agreed with Spanx and invalidated the patents. As shown below, the court found U.S. Design Patent No. 666,384 ("the '384 patent") to "suffer[] from a fatal inconsistency"4:
Can't see it? It is important to know that "solid" lines are part of the claimed design and "broken" (or dashed) lines are not. With that in mind, look more closely at the bust line of the left-side view as compared to the rear view:
The claimed portion of the rear view extends higher up the wearer's back than the claimed portion of the side view. In short, the drawings are inconsistent. The court determined that it could not resolve this problem in favor of the patent owner because doing so "would materially alter the 'subject matter covered by the exclusive rights of the patent.'"5Its hands tied, the court declared the '384 patent "insolubly ambiguous," and thus invalid.6
This case is unusual—but only because this patent emerged from the USPTO allowing a court to render this decision. A recent study showed that, of rejections to pending design patent applications, the USPTO rejected 91.53% of the applications because the drawings lacked clarity or definiteness.7This strongly suggests that the USPTO is catching most of these drawing issues before the design patents issue.
The best advice for applicants is to follow the USPTO's suggestion and hire a professional draftsperson that specializes in preparing design patent drawings.8Provide this draftsperson with high-quality photographs of a product embodying the design or with CAD files of the product. If feasible, send that draftsperson a sample article. While your drawing fees will be higher, you will likely save money in the long run by reducing or even eliminating much of the back-and-forth with the USPTO on the road to getting your design patent.
If you file first in another country, especially one with only a registration system, then it may seem unnecessary to spend the extra money to get high-quality drawings. But if you think you might file in the United States and wish to claim priority to the earlier filing, then it still makes sense to retain a professional draftsperson. With proper planning, you may be able to largely reuse the same set of figures with only minor alterations throughout the world.
One other important note is that, while the USPTO encourages as many figures as needed, many parts of the world take the opposite view. For instance, the European Union (Office for Harmonization in the Internal Market) limits the number of drawings for each embodiment to only seven figures. And South Korea has a limit on how many perspective views can be included in a single application. This can make filing an application in the United States that was first filed elsewhere challenging in some circumstances. You should consult competent counsel to help you navigate all of these issues.
Endnotes
1MPEP ¶ 15.48 (9th ed. Mar. 2014).
2Id.
3No. 13-cv-02157, Dkt. 58 (S.D.N.Y. Apr. 29, 2014).
4Id., slip op. at 21.
5Id. at 22 (quoting Ancor Techs., Inc. v. Apple, Inc., 744 F.3d 732, 737 (Fed. Cir. 2014)).
6The district court would presumably make the same decision after the U.S. Supreme Court's recent holding in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (U.S. June 2, 2014). In this case, the Supreme Court overturned the "insolubly ambiguous" test in favor of a test asking, in light of the specification and the prosecution history, whether the claim "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Id., slip op. at 1.
7Jason J. Du Mont and Mark D. Janis, Virtual Designs, 17 Stan. Tech. L. Rev. 50 (2014).
8USPTO, A Guide to Filing A Design Patent Application.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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