Patent Case Law and Intellectual Property Practice Blog

日本語版: https://www.takaishihideki.com/single-post/linkedin-7511584901020741632-ja Article information Content type: Publication review Categories: Trademarks / United States / China / South Korea / Europe / Other foreign jurisdictions Issues: Distinctiveness / Descriptive marks First published on this site: 2026-10-03 Display and classification checked: 2026-10-03 [Trademarks / Article] “Onomatopoeia as trademarks: Current conditions in Japan and other countries” (Masako Nishi

Selecting a particular species without contesting the examiner's definition or limitation of the species creates a risk that non-elected species will be regarded as excluded from the claim scope. ⇒ As claim 73 was withdrawn without contesting the examiner's characterization, its features were held to have been excluded.

US design patent infringement assessment originates in the ordinary observer test established by the Supreme Court's 1871 Gorham judgment. From the 1984 Litton Systems judgment onward, the CAFC introduced the point of novelty test alongside it. This required the accused design to possess the novel design features (points of novelty) distinguishing the patented design from prior designs.

The CAFC en banc judgment of May 21, 2024 (LKQ) abolished the Rosen–Durling test, used to assess US design-patent obviousness for over 40 years. ⇒ Design patents will now be subject to the four factual inquiries (Graham factors), as utility patents are. 1. Previous standards: The end of the Rosen–Durling test

1. A distinctive feature of the US design system: The article's use is disregarded US design law is part of patent law (35 U.S.C. §171), and patent principles apply. Its most significant feature is that the article's use stated in the claim preamble is, in principle, not limiting.

1. Expanding protection for image designs (GUI protection) European and US trends contrast. Europe (EU): The amended CDR (Council Regulation on EU Designs), enacted in October 2024, clarified that virtual objects can be protected without particular limitations. Protection is extremely broad.

1. Classification and identification of goods/services in virtual spaces Examination practice in different countries and regions shares the following understanding. “Virtual goods” alone is unclear in scope; the relevant content must be specifically identified, as in “downloadable virtual clothing.”

In Japan, the 2016 revision of the Examination Guidelines strengthened protection for food-use inventions, but overseas, national laws and examination practices differ greatly. 1. Permissible claims ① US: Product-use inventions are not recognized; draft as methods. A use in the preamble often has no limiting effect.

Explore articles on damages, injunctions and proof of infringement. The relevant considerations differ across legal fields and cases; consult the individual articles and their sources.

1. Direct infringement (35 U.S.C. § 271(a)) (1) System inventions (NTP) Even if some components (servers, etc.) are outside the United States, use is considered domestic if the system is “controlled and beneficially used” in the United States, with its benefits enjoyed there.