IP Recap #53

August 16, 2018

IP Recap Archive

Design Patents Coming Into Fashion?


The Story
In the fashion industry, brands and distinguishing features are of utmost importance, and therefore the IP around those characteristics is of high importance too. Intuitively, one would expect the brands to be trademarked, and then the clothes, accessories etc. designs (patterns etc.) that are produced to be protected by copyright. However, as of the recent landmark case Star Athletica, LLC v Varsity Brands, Inc., copyright could be more tricky to navigate for the fashion industry. The case went to the supreme court, which ruled that a “useful article” must have “separability”. This means the only copyright-eligible aspect of a garment, bag, accessory etc. is a design feature rather than the whole item itself. In essence, this means that the elements must be identifiable as being more akin to art if separated from the practical use of the item.

Why It Matters
Due to this complexity of navigating these copyright issues, some brands have instead been turning to design patents to protect their products. This is an expensive process and is only likely to be a viable option for major brands. Alternatively, it could mean that trademarked logos/slogans will need to become a bigger feature since they cannot be copied. However, these involve either spending significant amounts of money, or changing the products, so could we see a movement to update the US system to be more like the European one, with the option of either registered designs and unregistered Community design rights?

Inventor-Owned Patents Given Special Dispensations

Inventor Patent protection

The Story
Recent SCOTUS legislation has focussed on limiting the impact of NPEs, with eBay v. MercExchange making it much harder to get an injunction against an infringer, and TC Heartland v. Kraft Foods, which limits the choice of where a case can be filed against an infringer. For an individual with an infringed patent and limited travel capability, this could make enforcing their patent very tricky. Instead, there is the new Infor inventor-owned patents, that can be enforced either in the defendant’s own jurisdiction, or where the infringer has an established place of business. There’s a similar loophole for damage awards where there is a presumption of irreparable harm to an inventor when there is a verdict in the inventor’s favour.

Why It Matters
The aim of the legislation was to reduce the impact of infringement rulings and to prevent plaintiffs from choosing courts based on success rates in order to level the playing field. The new Inventor Protection Act means that inventors are exempt from these rulings, but that in itself introduces a new problem, in that there will need to be a definition made for inventor-owned patents. Does that include those owned by the inventor but have had the enforcement rights passed on to a Patent Assertion Entity? Or whether the inventor could act like a holding company for a licensing operation?

Why Big Companies Bulk-File

Patent Claims Technology companies Wired Article WIRED

The Story
Wired recently published a look at the patent filing trends from the US’s biggest patent filers. The bulk of these are companies you’d associate primarily with smartphone tech, with 2 automotive firms being the obvious exceptions. Given the number of patents filed per year, and the relatively small number of changes from one product release to the next, it might look on face value like many of these patents aren’t of much use. However, as any NPE will tell you, there is significant value in patents beyond patenting features of your own products, and defensive patent filings are a significant piece of a large multinational’s IP strategy if they are in a litigious sector.

Why It Matters
As well as covering your own products, to keep your products’ innovative features protected from copycats, defensive filing involves looking at the market and your competitors and ensuring you have IP that covers both what you and what others are likely to be bringing to the market. This means that, should you want to, you could be in a position to proactively seek infringement in a licensing campaign. Alternatively, it means that should you be accused of infringement by a competitor, you may be able to find assets that read on their products in order to negotiate a cross license. A third way of using these assets, and IBM are a good example of this, is to sell them on to others since further down the line, an earlier filing on a technology could prove very valuable and sales of such assets could provide a good source of income.

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