Despite some unfortunate history, design patent filings have been steadily increasing overtime. Even big tech companies like Samsung, Apple, Microsoft, LG, and Panasonic are getting into the design patent filing game. Further, recent court cases have shown the power of design patents.
If it looks like getting a design patent is in your future or you’d like it to be, keep these design patent key features front of mind:
Functionality. Are you trying to protect a functional (rather than ornamental) design? In other words, if you are touting specific functionality of the design during advertising – your design might be functional. If your design represents the “best” design – your design might be functional. If alternative designs would adversely affect function – your design might be functional. If you are concurrently filing utility patents on the same feature(s) – your design might be functional. Getting the idea?
Patentability. Is your design new and non-obvious? If you are coming from the utility patent world – I am not necessarily talking about a combination of elements resulting in an obviousness or lack of novelty determination. Design patents are a bit different. Think about the overall visual impression (e.g., airiness, rigidness, suspension, etc.) of the design to be patented and then see if you can find a reference that creates a similar visual impression or a combination of references that create the same overall visual appearance and impression. Get some feels about the design.
Application. Can your design (e.g., fabric pattern) be used for or on different articles of manufacture? If so, consider a separate design patent for each article of manufacture. Seems heavy handed but design patents are relatively inexpensive (no maintenance fees but lasts 15 years), and you’ll be happy you did when someone puts your design on a different article of manufacture than the one you patented.
In the end, design patents are an awesome addition to a portfolio if they’re the right answer for protecting your innovation and if done correctly. Find a trusted draftsperson for the figures and a knowledgeable practitioner – because in the end, it’s all in the design.
A vaccine for COVID-19 remains a hot topic in many people’s minds as a prerequisite for a return to normalcy. Thus it should come as little surprise that a number of companies both large and small are hot on the trail. As of April 20, 2020, WHO reported knowledge of 76 unique endeavors worldwide to generate a vaccine - with each pursuing one of a number of different approaches. While the exact numbers of new applications are still hidden behind the standard confidentiality policies of patent offices worldwide, it is practically certain that this torrent of interest will be matched with a similar storm of new IP.
Vaccines, along with diagnostic tests that have played a critical roll in areas with a strong handle on the epidemic, can sometimes fall into a troublesome section of U.S. patent law precedent based on the very fundamentals of their operation. Vaccines intend to bolster a person’s immune response against a pathogen by exposing the subject to a weaker version or fragment of it, and diagnostics frequently employ known complementary or relevant biomolecules to accurately identify its targets. Ever since the 2013 U.S. Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc., which primarily dealt with human DNA sequences for cancer screens, unmodified products of nature, even when isolated outside of their natural environments, are not patent eligible.
Therefore, none of these contenders in the race for a vaccine will be able to simply claim the COVID-19 RNA sequence or any of its protein components and call it a day. If they want patent protection for their vaccine, their claims must more closely match the subsequent effort that produces modern efficacious vaccines beyond mere identification and sequencing. This often includes modifications to the fundamental biomolecules to improve its exposure to the body’s immune system or its manufacture by some clever, synthetic process. Sometimes, this means packing together or fusing biomolecules from different sources, such as an Oxford University group’s use of a chimpanzee adenovirus vector. Furthermore, the vaccine needs to be properly formulated so it can be safely transported and administered to patients, leading to rigorous experiments testing the shelf life of the chosen biomolecules in various solutions and under wide ranging conditions.
In this manner, we will find not just one, but many, COVID-19 vaccine patents once the pre-publication window at the patent offices ends and we all are able to peer into the technical details. Until then, we will have to wait and see which of the many projects will yield successful vaccines and strong patents (all of the aforementioned modifications, while circumventing the natural product exclusion, must still be novel and non-obvious to one of skill in the art), but during this public health crisis, it is encouraging to know that no simple catch-all vaccine patent can threaten to stifle the widespread ingenuity and hard labor we very much need.
The COVID-19 crisis has brought unprecedented demands on small businesses and inventors. Through these challenging times, we know that so many are making courageous sacrifices to preserve employee well-being while keeping the lights on. Consistent with our mission to support emerging growth companies, we feel that such sacrifices should not include the loss of hard-fought R&D efforts.
We'd like to help. Aurora Consulting is proud to announce the RISE Award, which offers a free provisional U.S. patent application or $5,000 towards a non-provisional U.S. patent application to a selected applicant. We hope that this award can help provide stability and encouragement to diligent innovators.
By: Josh Sloat
COVID-19 is touching all aspects of our personal and work lives in profound ways. Below you'll find a roundup of our best coverage on how this is impacting venture-backed startups, what we might learn coming out of this crisis, some tips on how to navigate the Paycheck Protection Program, and a guide to effectively working from home.
By: Josh Sloat
The COVID-19 crisis has triggered a tsunami of folks working from home. This has spurred a ton of questions from friends, family, and not yet liberated former colleagues about remote work. As a company that has been fully distributed since day 1, we have some thoughts. We’ve seen people harness the autonomy and do the best work of their lives. We’ve seen others fail hard. This guide has been assembled with much love to help sway the balance in your favor … at least as much as is humanly possible under present circumstances.
By: Daniel D. Wright
Patent sytem participation rates
In 2018, Congress passed the Study of Underrepresented Classes Chasing Engineering and Science Success (SUCCESS) Act to authorize an investigation into the demographics that participate in our patent system. The final report, delivered in October 2019, provided some predictable results. Working with limited raw data and third party literature on the topic, the report concluded that despite a promising uptick in women’s percentage of patenting (from about 3% in 1976 up to 12% in 2016; p.8), women and minorities are still underrepresented before our patent system in comparison to nationwide population statistics in ways not entirely explicable by economic or education backgrounds (p.13). Furthermore, it identified that not only are corporations the largest filers for patents but also present some of the lowest women participation rates (p.2).
A more inclusive patent system
Late this past month, the USPTO launched its Expanding Innovation Initiative, one of its first projects born from the SUCCESS Act to help bridge these gaps. Along with the SUCCESS Act report itself and other statistical references, the Initiative presents a number of materials designed for would-be inventors and experienced practitioners alike to foster innovation. For the former, the Initiative offers a free accessible crash-course in the fundamentals of patent prosecution, hoping to “demystify” the patent system for those intimidated by the Office’s stern formalities and rigorous procedures. For the latter, the online repository provides various toolkits to jumpstart potential mentoring or community outreach programs to better enable those who are willing to extend a helpful hand. In these kits, you can find a Quickstart guide and some sample paperwork to set up your own program either within your current business or in your larger community.
Take the next step
So whether you’re a backyard inventor looking to get started on protecting your idea or a successful IP practitioner or inventor looking to encourage others down that path, we at Aurora invite you to engage these brand new resources at the USPTO.
This is an update for various patent offices as a result of the coronavirus pandemic (updates received and provided by Morningside IP). These updates are current as of March 26.
Canada - The Canadian Intellectual Property Office will provide an extension to April 1 for all deadlines falling between March 16 and March 31 that were effected by COVID-19. For deadlines falling after April 1, extensions can be obtained upon request.
EPO - The European Patent Office has issued a general deadline extension to April 17 that applies to all EPO-specific deadlines expiring on or after March 15. The extension covers all deadlines of EP applications pending before the EPO, including office action deadlines.
India - Due to national lockdown, India’s Office of the Controller General of Patents, Designs and Trademarks will remain closed for a period of 21 days effective from March 25. As a result, due dates falling during this period of closure will be delayed until the date on which the office reopens (April 15). Delayed due dates will be applied to completion of various acts/proceedings, filing of any reply/document, and payment of fees.
Israel - The Israel Patent Office said it is likely to grant extensions where applicants can demonstrate that circumstances relating to the Corona epidemic resulted in an inability to meet ILPO deadlines. In order to allow applicants time to submit extension requests, no files will be closed before May 1 for failure to answer ILPO correspondence.
Italy - The Italian Intellectual Property Office announced that any certificates and IP titles expiring between January 31 and April 15 will remain valid until June 15 (this does not apply to international trademark applications).
Mexico - The Mexican Institute of Industrial Property, as well as all the courts, will remain closed to the public, suspending and extending all terms at least until April 20. Therefore, all deadlines will be moved to April 20th when applications/responses can be filed before IMPI.
South Africa - Due to national lockdown, the South African Companies and Intellectual Property Commission will be closed through April 16, including online systems. Deadlines for filing Annual Returns between March 25 and April 15 will be automatically extended until April 30.
South Korea - The Korean Intellectual Property Office will grant an automatic deadline extension for applicants who have failed to comply with the statutory time limits for submitting documents or paying fees to KIPO, for any reasons relating to the coronavirus. Affected applicants will be asked to submit a relief measure request or a statement of payment, together with an explanatory statement and evidential materials.
Thailand - The Thailand Department of Intellectual Property is implementing a grace period that will extend the usual deadlines for anyone who is directly affected by COVID-19. The grace period will apply to all IP-related prosecution processes, including deadlines related to applications, oppositions, registrations, office actions or any payment.
United Kingdom - According to the UK Intellectual Property Office, all physical hearings are cancelled until June 1 (this date will be kept under review). Rescheduled hearing dates will be communicated by the UKIPO over the next few days.
USA - The United States Patent and Trademark Office will waive the requirement for an original handwritten ink signature for certain documents and payments. Copies of signatures will be accepted in both instances.
Here is a list of some of the national and regional Patent Offices that are physically closed to the public, though the majority are maintaining online services:
Please note that many patent offices are operating at a reduced staff level, so delays are to be expected.
We currently have an open position for a Project Intermediate Manager that would support efforts for the Michigan-Pittsburgh-Wyss Regenerative Medicine Resource Center and the recent Biosciences Initiative award in “Engineering Cell Programmable Biomaterials for Dental and Musculoskeletal Health”. I think this would be a great fit for a recent graduate/ postdoc in the biomedical/ health sciences that may be looking for more of a research administration/ project management position.
The direct link to the job posting can be found here:
Machines are now capable of independent innovation, but should a machine be named as the inventor? Machines do not have legal personalities but does the public have the right to know who (or what) actually conceived of the invention?
Why it matters: According to an article published in Artificial Intelligence Technology and The Law, there has been a steady increase from 2008 to 2017 in issued patents in fields such as artificial intelligence, neural networks, and machine learning. It’s easy to fathom that this trend will continue and likely exhibit increasing complexity while requiring less human input into the resultant innovation.
The big picture: The United States Patent and Trademark Office in the Manual of Patent Examining Procedure states that "The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor.”
• A machine named DABUS was recently listed as the inventor on two European patent applications EP18275174.3 and EP18275163.6. In both cases, during appeal, the application was rejected for failing to designate an inventor in compliance with the European Patent Convention. These decisions raise a few questions:
1. In the absence of machine legal personality, should a company or an otherwise owner of the machine be listed as the inventor? If yes, does listing the owner of the machine (as opposed to the actual machine) as the inventor truly comply with the rule of the various patent offices?
2. In a world where machines can be listed as inventors, how do we prevent companies from listing the machine (potentially easier legally because more “control”) and bypassing a true human inventor?
3. What do the frameworks look like for determining machine inventorship?
• There is huge upside for machine-driven innovation in fields such as drug discovery, pathology, diagnostics, and big data analytics. However, at least for drug discovery and related disciplines, human intervention in the innovation process remains critical for identifying synthesizable, efficacious, and safe compounds.
The bottom line: So at least for the time being, the answer to this question while important, lacks urgency and depends on more thought and information.
Go deeper: The Artificial Inventor Project
Ashley Sloat, Ph.D.
Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey.