Determining the 'Article of Manufacture' Under 35 U.S.C. 289

The Journal of the Patent and Trademark Office Society, Forthcoming

16 Pages Posted: 4 Aug 2017

See all articles by Perry Saidman

Perry Saidman

Saidman DesignLaw Group

Elizabeth Ferrill

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Damon Neagle

Design IP, PC

Tracy Durkin

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Date Written: August 1, 2017

Abstract

The Supreme Court handed down its decision in the design patent case of Samsung v. Apple in December, 2016. The case involved interpretation of 35 U.S.C. 289 that says that an infringer is liable to the design patent owner to the extent of his total profit for sales of any article of manufacture to which the patented design has been applied. The Supreme Court decided that an "article of manufacture" of Section 289 may be an end product as sold, or a component of the end product. In its opinion, the Court left open the question of how to determine the relevant "article of manufacture". This article, a collaborative effort among a small group of design patent specialists, proposes a test for determining the relevant "article of manufacture" in any given case, and also proposes considerations for determining the total profit once the relevant article of manufacture has been identified.

Keywords: design patent, article of manufacture, Section 289, total profit, damages

Suggested Citation

Saidman, Perry and Ferrill, Elizabeth and Neagle, Damon and Durkin, Tracy, Determining the 'Article of Manufacture' Under 35 U.S.C. 289 (August 1, 2017). The Journal of the Patent and Trademark Office Society, Forthcoming, Available at SSRN: https://ssrn.com/abstract=3012295

Perry Saidman (Contact Author)

Saidman DesignLaw Group ( email )

8601 Georgia Ave.
Suite 603
Silver Spring, MD 20910
United States

Elizabeth Ferrill

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP ( email )

901 New York Ave. NW
Washington, DC 20001
United States

Damon Neagle

Design IP, PC ( email )

5050 Tilghman St
Allentown, PA 18104
United States

Tracy Durkin

Sterne, Kessler, Goldstein & Fox P.L.L.C. ( email )

1100 New York Avenue, NW
Washington, DC 20005
United States

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