By Michael Fisch
innovation
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Photograph by Michael J. Clarke
winter 2023
Professor Sarah Burstein, an internationally recognized expert in design patents, joined the Suffolk Law faculty this summer. Burstein’s scholarly work addresses questions about the fundamental nature of design patents, benefitting from her educational background in art and design. Her opinions are regularly sought by prominent news outlets, including the Wall Street Journal, National Public Radio, Forbes, Time, and Bloomberg.
When people think of “patents,” they usually are thinking of utility patents, the ones that protect useful inventions. But, since 1842, U.S. law has also provided for the issuance of design patents, which protect ornamental inventions. So while utility patents protect how things work, design patents protect how things look. In the recent case Apple v. Samsung, Apple asserted both types of patents, including a utility patent for its “slide to unlock” gesture and a design patent for how the icons can look on an iPhone screen.
What is a design patent?
It’s not just because I love design patents—though I do. I also think it’s an area where our students can get a real advantage in this increasingly important and understudied area of law.
Design patents form a comparatively small percentage of issued and litigated patents, but if you have a little bit of knowledge, you could be the expert at your firm in this cutting-edge area. You’ll go into your first job knowing the key terms and issues, the critical cases to think about for context—and the gray areas.
Consumer companies, including fashion brands and furniture and tech companies, are asking, “How do my utility patents, copyrights, and trademarks intersect with design patent law?” Smart IP lawyers in the consumer space are increasingly thinking about design patents as part of a multidimensional net of protection.
Why teach design patents?
Take a company like Apple. It seems like whenever they come up with a new icon design, they get at least one design patent for it, register a copyright, and register the design as a trademark. This kind of overlapping IP portfolio gives them different enforcement options and different remedies. This provides more powerful protection than any single IP right would alone.
What’s a good example of this “net of protection” idea?
One of my recent pieces, “Whole Designs”, is informed by the principles that I learned studying and making art—such as how the negative space in a design matters, how the use of repetition matters, and so on. I realized that all of these elements that were basic to me, coming from an art background, were not necessarily basic to everyone. Once you’ve actually made things, you have a different understanding of what design is than someone who is looking with a lens from science or engineering or even utility patents.
How would you characterize your current scholarly work and research?
My favorite teaching case is High Point Design LLC v. Buyers Direct, Inc., which covers fuzzy slippers. Yes, that’s right, a case about fuzzy slippers resulted in two Federal Circuit opinions that cover almost every major issue in design patent law—novelty, nonobviousness, ornamentality, infringement.
Ultimately, the Federal Circuit concluded that the patent was valid, but that the accused shoe didn’t look similar enough to infringe. It’s a good case to show what’s going on in design patents these days. And I have it on good authority that both versions of the fuzzy slippers in dispute are very cozy!
What’s your favorite case to share with someone who isn’t familiar with design patent law?
I began my career doing IP litigation, including one case that involved a design patent. I was a junior associate, and no one I was working with knew about design patents. I had 10 hours to write a memo that addressed the subject. I discovered that, at that time, most of the commentators writing about design patent law had science and technical degrees and backgrounds. No one really seemed to have studied areas like design principles, art theory, and history.
There were a lot of big, open questions that were not getting much attention, let alone answers. I thought, “Here’s an area where I could add a lot to the discussion.” I’m grateful that I’ve had the opportunity to join this conversation and hope to be a part of it for many years to come.
Did you have a “Eureka!” moment when you realized that design patent law was an area that you wanted to delve into?