Insights on Design Patents and Issues for Modern-Day Designs as “Articles of Manufacture” with Mark Janis
In this episode, Jeff Harty and Professor Mark Janis delve into the world of design patents, discussing how they became part of the patent regime, challenges facing the protection of modern-day ornamental designs, and possible upcoming changes in design patent law in view of the “article of manufacture” requirement. They also look at specific cases and strategies for claiming and prosecuting design patent applications.
In this episode, Jeff Harty and Mark Janis discuss:
- The evolution of design patents and how they found their home in the patent regime.
- The effects of Section 171 and imposing many of the requirements for utility patents on design patents.
- The “article of manufacture” requirement and its impact on protecting modern ornamental designs.
- Possible upcoming changes in design patent law.
Key Takeaways:
- Design patents have been an awkward fit in a patent regime focused largely on technological inventions.
- Recently, the Federal Circuit Court has ruled that textual references to the article of manufacture in the title and in the claim could limit the scope of design patent protection.
- If you're going to have the textual matter limit the scope of your claim for infringement, surely, it would equally apply in a determination on patent validity.
- The Patent Office has not revised the guidelines for graphical user interfaces in years, but debate and discussion about the needed changes are happening now.
“You hear reports of a global marketplace for user interface/user experience design in the billions and billions [of dollars]. It could be the key area of design and innovation in the future. To be sure, we could create rules that effectively would kick those designs out of the design patent regime if we cared that much about the language ‘article of manufacture.’” — Mark Janis
About Mark Janis:
Mark D. Janis teaches courses in patents, trademarks, and other areas of intellectual property law. He is the Robert A. Lucas Chair of Law and the director of the Center for Intellectual Property Research at the Indiana University Maurer School of Law. Janis has authored a number of books, including the treatise IP and Antitrust (with Herbert Hovenkamp, Mark A. Lemley, Christopher R. Leslie, and Michael A. Carrier), Trademarks and Unfair Competition in a Nutshell, two casebooks (Trademarks and Unfair Competition: Law and Policy, 4th ed., and Trade Dress and Design Law, both with Graeme B. Dinwoodie) and other books on trademark law (with Dinwoodie). He has published numerous law review articles and book chapters on patent law, intellectual property and antitrust, trademark law, intellectual property protection for plants, plant biotechnology, and intellectual property protection for designs.
Janis is the winner of a Collegiate Teaching Award and a Faculty Scholar Award (both from the University of Iowa College of Law), and INTA’s Ladas Award in 2008. At the Indiana University Maurer School of Law, he was the recipient of the Leon H. Wallace Teaching Award, the highest teaching honor given to law faculty.
Prior to joining the faculty at Indiana, Janis was the H. Blair & Joan V. White Chair in Intellectual Property Law at the University of Iowa College of Law. He practiced patent law at Barnes & Thornburg (Indianapolis) from 1989 to 1995.
Connect with Mark Janis:
Website: https://law.indiana.edu/about/people/details/janis-mark-d.html
Email: mdjanis@indiana.edu
Twitter: https://twitter.com/markjanisiu
Twitter: https://twitter.com/ciprmaurer
Connect with Jeff Harty:
Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/
Email: jharty@nyemaster.com