Author: Robert G. Oake, Jr.

How to Avoid Objections and Rejections to Broken Line Statements in Design Patent Applications – Part 1 Introduction

The theory underlying broken line practice in design patent prosecution is relatively simple. Broken lines typically show portions of an article that form no part of the claimed design, unclaimed environment to the article, or boundaries of the claimed design. Despite these relatively simple concepts, numerous objections and rejections continue

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February 18, 2024 No Comments

Persuasive Value of Prior Design Patents and Applications

Updated March 5, 2024. Applicants responding to rejections and objections can use the Design Patent Pro (DPP) ProSearch database to search for and cite prior design patent application documents and arguments where applicants successfully overcame similar rejections and objections. Should examiners consider such prior examples and arguments? What is their

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February 17, 2024 No Comments

Why Get A Design Patent?

Why Get A Design Patent? Historically, design patents have enjoyed a mixed reputation. Many are relatively easy to obtain and to design around, which has given them a reputation for being a limited form of protection. But case law following Egyptian Goddess v. Swisa has shown that design patent law

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September 15, 2022 No Comments

Prosecution History Estoppel in Design Patent Cases

Prosecution history estoppel (PHE) may prevent a finding of infringement when the patentee originally claims the matter alleged to infringe but then narrows the claim in response to a rejection during prosecution. PHE applies when: (1) there is a “surrender of claim scope” during the prosecution of the asserted design

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September 13, 2022 No Comments

Conclusory Allegations of Marking do not Survive Motion to Dismiss

A plaintiff must plead and prove compliance with the patent marking statute to receive pre-suit damages. In Blackbird Tech LLC v. Argento SC by Sicura, Inc., 21cv11018, (S.D.N.Y. Aug. 26, 2022), the pleading statement “[a]ll marking requirements under 35 U.S.C. § 287 have been complied with” was considered too conclusory

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August 31, 2022 No Comments

Don’t Get Tripped Up Over Wire Frame Lines

Wire framing is a technique that defines shape and contour of a design with lines created at changes in form, such as when a flat surface transitions into a curved surface. Wire frame lines often are created by CAD drawing programs. Although wire framing is not prohibited by the USPTO,

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August 28, 2022 No Comments