Intellectual Property

3 Questions For Design Patent Guru, Sarah Burstein

She may be the only person with an art degree who academically writes in this area of the law.

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The younger wave of IP-focused academics continues to deserve our attention. At the forefront of the burgeoning field of design law is Sarah Burstein, Professor of Law at the University of Oklahoma College of Law.  A former Biglaw IP litigator who clerked for the Honorable Robert W. Pratt of the Southern District of Iowa, Professor Burstein teaches a full complement of IP courses while maintaining an active and substantive presence on both Twitter and Tumblr. Her scholarship focuses on design law, with a particular focus on the always-interesting (at least to me) world of design patents.  As usual, I have added some brief commentary to Professor Burstein’s answers below, but have otherwise presented her answers as she provided them.

Immediately below are my written questions and Professor Burstein’s answers:

1) In your view, are we ever going to see law schools require all students to take a survey IP course that touches on the basics of IP? Or at least replace some of the boring stuff in 1L Property classes to discuss IP?

I doubt it’s going to happen anytime soon, but I would love to see IP become a required — or at least, an encouraged — course. IP is everywhere and IP issues show up in all kinds of legal practice. I tell my IP Survey students that one goal of the course is to equip the students who won’t focus on IP to tell the difference between patent, copyright, and trademark issues so that they know what kind of IP lawyer to call if an issue arises. (And yes, it matters. It’s way better to have a legitimate trademark expert register your trademark.) Of course, if those students who didn’t think they were interested in IP end up falling in love with one or more of the topics we cover, well, who am I to judge?

GK: I have dedicated a number of columns towards talking up the need for increased IP literacy for students at all high-school and up educational levels. Graduating law students, in my view, should at least have the competency that Professor Burstein describes, in terms of being able to direct colleagues and clients to the proper IP lawyer when the need arises. And I can understand why a career in IP law could appeal to a broad cross-section of aspiring lawyers, if only they had the exposure to the plethora of interesting issues that IP courses cover.

2) Your online presence is heavily geared toward discussion of IP rights around designs. What fascinates you about this topic, which in my experience many IP practitioners will only encounter sporadically in their practices?

I was an Art & Design major who ended up doing IP litigation. Copyright in useful articles was the first issue that really got me excited about the law. And that led me to product-design trade dress. But I didn’t discover design patents until I was in practice. I still remember the partner asking me to write a memo about, basically, “What’s this design patent stuff about?” After that, I was hooked. Not only did design patent law combine my longtime interests in design and IP, but it was also an area where I felt like I had something unique to contribute. At that point, it seemed like the only people who were talking about design patents were people with science or engineering degrees — i.e., members of the patent bar. There just wasn’t anyone with my educational background writing in that area. So, when I decided to pursue a career in legal academia, it seemed like a perfect fit.

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Today, I’m still the only person with an art degree who writes in this area — at least as far as I know. But the interest from the bar has increased dramatically. I’ve received initiations to give presentations on design patents at CLE conferences all over the country and the lawyers I talk to seem really interested in learning more, even those who’ve been practicing IP for decades. So I don’t think it’s nearly as niche as it used to be. And I don’t think that will be changing anytime soon.

GK: My very first assignment as a putative Biglaw patent litigation junior associate was to draft a memo on design patent and trade dress issues around a client’s sneaker design. For the next 10 years, however, I don’t think I had more than a handful of design patent-related assignments. Lately, however, it has become a larger part of my firm’s practice — driven in part by two factors: 1) increased interest from Chinese clients in securing design patent protection for their products and 2) Amazon’s willingness to take down listings based on design patent infringement allegations. Good luck with the latter if you complain based on a utility patent. Add in the well-documented challenges with asserting utility patents generally nowadays, and the increased interest in design patents starts to make a lot of sense.

3) You have advocated for a comprehensive rethink in how we consider the scope of design patents. What improvements do you foresee if your ideas continue to get traction?

I’m flattered to hear you say you think they’re getting traction! But seriously, there is so much thinking to be done in design law more generally. Sometimes I tell my students it’s like someone planted a beautiful English garden behind a wall and made it accessible only by a few disinterested gardeners and left it that way for decades. Now, there are tons of weeds and everything has kind of grown out of place. Some people think we should just raze it and start over. I think the system has a lot of potential but there’s a lot of weeding and pruning to be done.

When it comes to scope, I think the current infringement test is actually pretty good. Under Egyptian Goddess, courts are giving design patents appropriately narrow scopes and are willing to throw out bad infringement claims early. (For more on this, see here.) But I’d like to see more thoughtful attention to the issue of statutory subject matter. What kinds of “designs” should we protect? What can you even claim as a separate “design”? That kind of thing. The current regime doesn’t match with historical practice, doesn’t match with the statutory text, and creates a lot of problems from a policy perspective. I’m still working through all of these issues but, if anyone is interested, I’ll post drafts to my SSRN page when they’re in sharable form.

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GK: It is great that someone is speaking deeply about these issues, considering the very visual nature of the way products are marketed to, and viewed by, the consuming public nowadays. There is still a lot of uncertainty in terms of how the IP bar relates to design patents, and while I agree that Egyptian Goddess provides a workable test for courts to apply regarding infringement, the work of educating the IP bar and clients on design patent issues is far from done. Which is why Professor Burstein’s work, and her deft use of social media to bring it to an audience on an ongoing basis, is of the moment in my view.

My thanks to Professor Burstein for the insights and cooperation, and I wish her continued success and fulfillment with her academic career. It is always a privilege to hear from an up-and-coming IP personality, especially one with such a big role to play in developing the next generation of IP lawyers who is already a leading voice on a developing area of IP law. I am always open to conducting interviews of this type with other IP thought leaders, so feel free to reach out if you have a compelling perspective to offer.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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