This recent article in Technical Advisory Service for Attorneys entitled “Caution! CAD Drawings May Be Fatal to Your Design Patent” highlights a weakness of many inventors who submit drawings to the United States Patent and Trademark Office for a design patent.
While the article must be read for complete comprehension of the author’s point, it centers on a lawsuit for patent and copyright infringement in which the author was hired as an industrial design expert witness for the defendant. The lawsuit centered on the defendant’s reproduction (at the request of an agency of the United States government) of a piece of furniture created by the plaintiff. At the time of the request, the defendant was not informed that the plaintiff had filed design patents and copyrights on his furniture.
Upon being informed of the filings, the defendant redesigned his submission, at which time the plaintiff filed suit for infringement by both of the defendant’s designs. The expert was then called in to make a determination as to whether the defendant’s designs infringed on the plaintiff’s intellectual property rights.
The expert determined that neither the defendant’s first or second designs infringed on the plaintiff’s property because “all of the drawings in both the design patents and the copyrights were straight forward, unmodified CAD drawings that did not include any surface shading that is required to distinguish between open and solid surfaces in design patent drawings.” (See the linked article for examples of the drawings.)
The expert then quoted the stipulation of the USPTO’s Guide for the Preparation of Patent Drawings that shadings are essential in determining the uniqueness of the object’s design. As a result of his findings, the plaintiff withdrew his lawsuit.
The expert concludes, “it is all right to produce CAD drawings as the basis for a design patent application, but make certain that the drawings are modified to conform to the rules of the USPTO, or the design patent may be doomed to protect that which it was intended to protect.”
At Inventia Patent Drafting, we are well aware of the USPTO’s stipulations for design patent drawings. Please note the examples in our portfolio which exhibit the fine detail and shading necessary to realistically render the features of the object portrayed. You may have complete confidence in the professional nature of the drawings we do for you. Contact us today for help with your design patent drawing.