Articles

Overlapping Intellectual Property Doctrines: Election of Rights Versus Selection of Remedies

Laura A. Heymann

Overlaps exist across various doctrines in federal intellectual property law. Software can be protected under both copyright law and patent law; logos can be protected under both copyright law and trademark law. Design patents provide a particular opportunity to consider the issue of overlap, as an industrial design that qualifies for design patent protection might also, in particular circumstances, qualify for copyright protection as well as function as protectable trade dress.... Read more about Overlapping Intellectual Property Doctrines: Election of Rights Versus Selection of Remedies

  • April 1, 2014
  • 17 Stan. Tech. L. Rev. 239

Progress and Competition in Design

Mark P. McKenna & Katherine J. Strandburg

This Article argues that applying patent-like doctrine to design makes sense only for a design patent system premised on a patent-like conception of cumulative progress that permits patent examiners and courts to assess whether a novel design reflects a nonobvious step beyond the prior art. If there is a meaningful way to speak of such an inventive step in design, then design patent doctrine should be based on that conception. But if nonobviousness has no sensible meaning in design, then a patent system cannot work for design.... Read more about Progress and Competition in Design

  • March 5, 2014
  • 17 Stan. Tech. L. Rev. 1

Functionality and Graphical User Interface Design Patents

Michael Risch

Modern designers of graphical user interfaces, or GUIs, have obtained design patent protection for creative computer software displays, a realm previously limited to copyright. The difference in protection is important because design patents do not traditionally allow the same defenses—like fair use—associated with copyright. Apple’s nearly billion-dollar judgment against Samsung, which included such a GUI patent, brought this issue to the forefront.This Article answers three emerging questions:... Read more about Functionality and Graphical User Interface Design Patents

  • March 5, 2014
  • 17 Stan. Tech. L. Rev. 53

Virtual Designs

Jason J. Du Mont & Mark D. Janis

Industrial design is migrating to the virtual world, and the design patent system is migrating with it. The U.S. Patent and Trademark Office (USPTO) has already granted several thousand design patents on virtual designs, patents that cover the designs of graphical user interfaces for smartphones, tablets, and other products, as well as the designs of icons or other artifacts of various virtual environments. Many more such design patent applications are pending; in fact, U.S.... Read more about Virtual Designs

  • March 5, 2014
  • 17 Stan. Tech. L. Rev. 107

(R)evolution in Design Patentable Subject Matter:The Shifting Meaning of "Article of Manufacture

William J. Seymour & Andrew W. Torrance

Design patents protecting electronic designs, including computer-generated imagery (CGI), have rapidly become an important and valuable intellectual property asset class. Designs for CGIs have enjoyed design patent protection since 1996, when the United States Patent and Trademark Office (USPTO) reversed its original position that CGI were not design patent eligible. Previously, the USPTO consistently rejected design applications claiming CGI for failure to meet the “design for an article of manufacture” requirement of 35 U.S.C. § 171.... Read more about (R)evolution in Design Patentable Subject Matter:The Shifting Meaning of "Article of Manufacture

  • March 5, 2014
  • 17 Stan. Tech. L. Rev. 183

A Rational System of Design Patent Remedies

Mark A. Lemley

A design patent owner who wins her suit is entitled to the defendant’s entire profit from the sale of the product, whether or not the design was the basis for buying the product. No other IP regime has this rule, and it makes no sense in the modern world, where a design may cover only a small component of a valuable product. The culprit is § 289 of the Patent Act, a provision added in the nineteenth century, when design patents were very different than they are today. We should abolish § 289 and bring rationality to design patent remedies. Read more about A Rational System of Design Patent Remedies

  • March 5, 2014
  • 17 Stan. Tech. L. Rev. 219

Moving Beyond the Standard Criticisms of Design Patents

Sarah Burstein

The U.S. design patent system has been widely criticized. Certain arguments against design patents have been made so often—and accepted so uncritically—that one might believe that the case against design patents was overwhelming and that the failure of the system was beyond dispute. These standard criticisms can be grouped into three main categories: (1) designs aren’t patent subject matter; (2) patent requirements are not “appropriate” for designs; and (3) patent protection is overbroad. This article examines each of these standard criticisms and concludes that they are not persuasive.... Read more about Moving Beyond the Standard Criticisms of Design Patents

  • March 5, 2014
  • 17 Stan. Tech. L. Rev. 305

Design Patents: Law Without Design

Peter Lee & Madhavi Sunder

Design patents have recently burst onto the intellectual property stage, but they are surprisingly underdeveloped for a body of law that is more than a century and a half old. Design patents are, quite simply, a body of law without design: there is little coherent theoretical underpinning for this long overlooked form of intellectual property.... Read more about Design Patents: Law Without Design

  • March 5, 2014
  • 17 Stan. Tech. L. Rev. 277

The Hypothetical Negotiation and Reasonable Royalty Damages: The Tail Wagging the Dog

John C. Jarosz
Michael J. Chapman

Reasonable royalty damages are the predominant form of relief awarded in patent infringement cases and, of late, have been a lightning rod for assertions that the patent protection system is out of control. The primary tool used to assess reasonable royalty damages is the hypothetical negotiation construct arising from the seminal Georgia-Pacific Corp. v. United States Plywood Corp. decision in 1970.... Read more about The Hypothetical Negotiation and Reasonable Royalty Damages: The Tail Wagging the Dog

  • August 29, 2013
  • Stan. Tech. L. Rev. 769

The Federal Circuit's New Obviousness Jurisprudence: An Empirical Study

Jason Rantanen

In 2007, following the Supreme Court’s first opinion addressing obviousness in the Federal Circuit era of patent law, Rebecca Eisenberg and Harold Wegner, two of the most prominent voices in patent law, offered competing predictions about the effect KSR International Co. v. Teleflex, Inc. would have on the Federal Circuit’s obviousness jurisprudence. Seeing KSR as part of a broader admonishment against the use of rigid rules rather than providing any substantive guidance, Eisenberg foresaw a future in which KSR changed what the Federal Circuit said about obviousness but not what it did.... Read more about The Federal Circuit's New Obviousness Jurisprudence: An Empirical Study

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