Imagine That IP Law Blog

What the change may mean for patent applicants

A pre-appeal brief conference can offer a relatively inexpensive opportunity to challenge a patent rejection before preparing a full appeal brief. In my practice, however, we rarely recommend one unless the record presents a particularly clear error. A focused five-page request may produce only a check-box decision indicating that the application should proceed to appeal, leaving the applicant with little insight into how the panel evaluated the arguments.

A recent USPTO change gives applicants a reason to take another look. In a ... Read More ›

For many consumers, finding a good “dupe” is not a mistake. It’s the goal. Rather than being tricked into believing they are buying a luxury product, shoppers increasingly seek affordable alternatives, knowing that they are not buying the high-end product being imitated. This trend creates a practical problem for all brands, especially fashion brands, where a product’s appearance may be an important part of its appeal and brand identity. Trademark infringement traditionally turns on whether consumers are likely to be confused. If consumers know they are buying a dupe, is ... Read More ›

A company may spend millions of dollars prosecuting and maintaining a patent portfolio designed around products, markets, and competitive threats identified five or ten years ago. The portfolio may contain excellent patents. The harder question is whether they are the patents the company would choose to own today.

Businesses change faster than patent portfolios. Products evolve, R&D priorities shift, companies enter new markets and make acquisitions, and new competitors emerge. Patents, by contrast, can remain in force for decades. Even a well-managed portfolio can ... Read More ›

Aggressive IP enforcement can be a powerful tool for protecting product designs, brand equity, and market position. But the related proceedings between Deckers Outdoor Corporation and Last Brand, Inc., d/b/a Quince, show the other side of that strategy: when enforcement becomes sufficiently broad, repetitive, or unsuccessful, the enforcement campaign itself may become the subject of litigation.

Following the jury verdict in Deckers Outdoor Corp. v. Last Brand Inc., Quince did not simply declare victory and move on. As discussed in our companion post on the Deckers jury trial ... Read More ›

On the surface, design patents often look straightforward: a handful of drawings, one claim, and a short specification (description). But the recent path of Deckers Outdoor Corporation’s U.S. Design Patent No. D927,161 (161 Patent) shows how deceptively complex design-patent enforcement can become once a patent moves from prosecution to PTAB challenge to jury trial.

The ’161 Patent survived an inter partes review (IPR) challenge at the institution stage. Yet the same design patent later went to trial, where a jury found infringement but also found the patent invalid ... Read More ›

The February 2026 federal district court and ITC complaints filed by General Motors against various aftermarket parties allegedly working “in concert” in the automotive replacement-parts market portend a new chapter in design-patent enforcement litigation. They may also provide a testing ground for two important Federal Circuit decisions: Automotive Body Parts Ass’n v. Ford Global Technologies, LLC, (“ABPA”) in 2019, and LKQ Corp. v. GM Global Technology Operations LLC,) (“LKQ”) in 2024. In those decisions, the Federal Circuit confirmed, on the one hand, in ... Read More ›

The Fourth of July is a natural opportunity for brands to focus on patriotic messaging, especially around America’s 250th celebration.

“Made in USA,” “American made,” “Built in America,” flag imagery, red, white, and blue packaging, and references to American workers or craftsmanship are all powerful marketing tools. They are also high risk advertising claims when the product, components, or manufacturing process do not fully support the claim. Accordingly, here is a timely reminder for companies to review how U.S. origin claims appear across packaging ... Read More ›

Increasingly, public AI tools that appear to be impressive are tempting to use for research, technology development, document preparation, and general queries on a variety of consequential issues including law in general, and patents in particular.  However, submitting information to a public AI tool can result in several overlapping dangers, such as patentability problems, loss of trade secret protections, breach of confidentiality obligations, and even export-control violations. 

Below, this article outlines some of the dangers that individuals, companies, and law firm ... Read More ›

Artificial intelligence (AI) is now a part of U.S. design patent examination, but not in the way some practitioners may expect. The latest public USPTO materials do not identify a new, post-DesignVision AI tool dedicated to design patent examination. Instead, the more important development appears to be that DesignVision has moved from a newly announced search tool to a routine part of the design examination workflow.

The USPTO launched DesignVision in July 2025 as “the first artificial intelligence (AI)-based image search tool available to design patent examiners” through ... Read More ›

In most commercially significant inventions, strategic filing of various types of “child” patent applications (patent applications extending from an original or “parent” patent application) in various worldwide jurisdictions is useful in capturing the full value of an original invention. The types of child applications include continuation, continuation-in-part, and divisional applications. The following notable distinctions are worth considering before filing a child application in any jurisdiction.

The first distinction is between continuation and ... Read More ›