Salvaging U.S. Design Patent Rights for Rottefella AS of Norway
In August 2013, our colleagues at Zacco Norway AS asked Kolisch Hartwell to review the prosecution history of four pending U.S. design patent applications that had been filed by another, much larger U.S. firm on behalf of Norwegian ski binding manufacturer Rottefella AS. The four applications were related, and had been filed to protect various aspects of a new and important commercial product release. Unfortunately, all four applications had been filed with poor quality drawings, and subsequent attempts made by the original U.S. firm to correct the flawed drawings had been rejected by the USPTO. After studying the prosecution history of the design patent applications, Kolisch Hartwell formulated a strategy for protecting as much of the Rottefella product design as possible. The client approved our proposed strategy, and all four pending applications were transferred to Kolisch Hartwell.
In two of the applications, we determined that the original filings did not provide a sufficient basis for claiming the features they had been intended to protect, and we permitted those applications to lapse. In the two remaining applications, Kolisch Hartwell prepared new drawings to capture as much of the design as possible without the addition of new matter, while complying with the stringent USPTO requirements for design patent drawings.
A comparison of one of the original drawings, the rejected replacement drawing submitted by the other U.S. firm, and our firm’s successfully submitted drawing demonstrates our strategy. To eliminate the issue of new matter, we used the original drawings, although small and poorly resolved, as the source material for preparing our formal drawings. As shown below, the drawings were enlarged and rendered with an appropriate line weight and clarity. In addition, elements of the design deemed by the USPTO to render the claim indefinite were disclaimed and rendered in broken lines, and surface shading was used to depict the contour of the article embodying the claimed design.
Our submission of the new formal drawings resulted in the allowance of both applications, and the corresponding patents were issued in January 2014, much to the satisfaction of the client.
With more than six decades of experience and extraordinary technical depth, Kolisch Hartwell has the ability to protect a company’s IP even when other firms fail. Our relatively small size and location based in Portland, Oregon allow us to provide highly personalized, high-quality IP services at a lower cost than larger firms based in bigger cities. Read more about how firm size and location affects IP billing rates.
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