Author Archives: Tom Tatonetti

Checklist for Filing an International Design Application (IDA) Pursuant to the Hague Agreement

1) Prepare the design application according to US standards. Unlike many foreign jurisdictions which implement a design registration process, the US implements an examination process similar to utility applications. This makes the USPTO a good target audience for design applications since the standards are higher relative to the registration jurisdictions. That is, if the USPTO […]

The Design Patent Decision that Patent Practitioners should Ignore… at least for now

On November 14, 2019, the Northern District of California found non-infringement of a design patent owned by OZ-Post because Simpson Strong-Tie Company’s accused product included a shaft that was not present in the claimed design.[1] The addition of the shaft to the accused screw head was sufficient to differentiate the accused product from the patented […]

Using the Word “Invention” in a Patent Application can Result in Disavowal and the Loss of Rights

Contrary to some patent practitioners who think that using the word “invention” or the words “present invention” in a patent application can have no effect on claim interpretation – Federal Circuit case law suggests otherwise. In fact, use of the word “invention” and other strong (or, perhaps, “profane”) language when characterizing an Applicant’s technology in […]