Tactical considerations for design patent the design

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was found to violate one Samsung patent and awarded Samsung US$ 158,400 in damages. Tactical Considerations for Design Patent The design patent in the US is a type of intellectual property right granted to the ornamental design of a functional item. Design patents are therefore considered a type of industrial design right. Ornamental designs of jewellery, smartphone and computer notebook are examples of objects that could claim design patents. It is interesting to note that design patents have always been easy to obtain; indeed, far easier to obtain than a utility patent (Quinn, 2011). In general, a design patent is obtained for the aesthetically appealing features of a product. In other words, the subject must be a product of aesthetic skill and artistic conception, not functional use. For instance, it would be hard to apply a design patent for a nail or key, since it would usually not have aesthetic appeal. To qualify for a design patent, the subject must be new in the sense that no identical design exists in the prior art. It must fulfil the ornamental standards and it must be original to the inventor or inventors seeking protection. In addition, design patents cannot be obtained for ornamental features that are not visible when the product is in use (Silverman, 1993). A design patent protects the appearance, not the mechanical structure. In this regard, it is possible for many different smartphones to receive design protection even though the basic mechanical structure is well known. In addition, design patent protection is limited by the design claim. In the US, a design patent protects ‘any new, original, and ornamental designs that are used for articles of manufacture’. 6 Design patent is obtained by filing an application with the USPTO. After the application is submitted, an examiner evaluates the application and determines if the design is patentable. This evaluation consists of determining ornamentality, novelty and non-obviousness of the claim. Design Patent Infringement Design was a main argument in the Apple versus Samsung war. In both lawsuits, Apple accused Samsung that it had systematically copied Apple’s innovation and designs. In general, the company sought out a way to protect the design since it had developed a new design. Under the US Federal Patent Act, if the owner of design patent believes that his patent has been infringed, he may bring an action. In general, design patent gives the owner the right to prevent others from making, using or selling a product that so resembles the patented product that an ‘ordinary observer’ might purchase the infringing article thinking it was the patented product. at PENNSYLVANIA STATE UNIV on September 19, 2016 bmc.sagepub.com Downloaded from
226 Narumon Saardchom South Asian Journal of Business and Management Cases, 3, 2 (2014): 221–228 The current design patent infringement test, known as the ‘ordinary observer test’ (Barcena, 2013), was first laid down by the US Supreme Court in 1871 in Gorham Co. vs White case involving an ornamental design for silverware handles. In Gorham, the court declared that there was infringement if

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