Patent on Jewelry Box Design

[quincy]

Thanks so much for your insight!

I will try to provide more information once the thread is cleaned up a bit.

What you will want to do is look at your box and compare it to the patented box. Subtract all elements that are functional and common to all boxes (e.g., top, bottom, place to hold ring) and see what elements are left.

What a design patent protects is the appearance. The unique additions to a common box that distinguish one box from others will be the design elements that could be protected.

If an ordinary observer would find your box substantially the same in appearance and design to the patented box, with no distinguishing elements between the two, it is possible your box does in fact infringe on the patent holder's rights.

A Hersey bar has unique indentations that separate the bar into several sections and this appearance is rights-protected (and a trademark). The design of the Hershey bar is visually unique.

This same visual uniqueness can be found in boxes. Box designs can be unique in shape or made of unique materials or have unique elements like the indentations of a Hershey bar. If two boxes are plainly dissimilar in appearance, a patent holder would have a difficult time showing design infringement.

See: Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 669 (Fed.Cir. 2008)

 

[dandl2]

I will try to provide more information once the thread is cleaned up a bit.

What you will want to do is look at your box and compare it to the patented box. Subtract all elements that are functional and common to all boxes (e.g., top, bottom, place to hold ring) and see what elements are left.

What a design patent protects is the appearance. The unique additions to a common box that distinguish one box from others will be the design elements that could be protected.

If an ordinary observer would find your box substantially the same in appearance and design to the patented box, with no distinguishing elements between the two, it is possible your box does in fact infringe on the patent holder's rights.

A Hersey bar has unique indentations that separate the bar into several sections and this appearance is rights-protected (and a trademark). The design of the Hershey bar is visually unique.

This same visual uniqueness can be found in boxes. Box designs can be unique in shape or made of unique materials or have unique elements like the indentations of a Hershey bar. If two boxes are plainly dissimilar in appearance, a patent holder would have a difficult time showing design infringement.

See: Egyptian Goddess v. Swisa, Inc., 543 F.3d 665, 669 (Fed.Cir. 2008)

Great points. I'd be happy to discuss via PM in more detail

 

[quincy]

Great points. I'd be happy to discuss via PM in more detail

I am afraid I don't offer off-the-board assistance to posters. What cannot be discussed on the forum is probably best discussed with an IP attorney in your area.

If after a comparison of your boxes to the patented boxes you believe that the patent holder is wrong in his assertion that your boxes are not readily distinguishable to an ordinary observer from the patented boxes, and you want to challenge his contention that what you are selling infringes on his design patent, this is something you can consider doing.

You might also be able to show that the patent examiner erred in issuing the design patent in the first place because the design is neither novel nor nonobvious.

Whether you have a legitimate legal leg to stand on here is something I can't tell you, though. I would not try to argue infringement with the patent holder until you have a personal review by an IP attorney in your area of the boxes in question.

Good luck.