Cisco Systems, Inc. – Flip Video Camera Design Patents
In 2009, Cisco Systems acquired the technology company that pioneered the original “Flip Video” cameras. Cisco turned to Patterson + Sheridan to protect the ornamental appearance of the point-and-shoot video cameras, which were tremendously successful due to their unique design.
We implemented an aggressive design patent strategy to cover various novel aspects of the camera’s ornamental design. As shown in the images to the right, we obtained multiple design patents covering various combinations of the cameras’ ornamental aspects.
Cisco successfully used the “Flip Video” camera design patent portfolio to file and eventually settle a suit alleging infringement of its design patents. This is described in a 2010 Law360 article (whose link is below).
Improving Efficiency, Reducing Costs for Asia-based Client
Patterson + Sheridan manages the patent prosecution process for one of the world’s top 10 U.S. patent issuers. While other law firms might be deterred by language barriers and travel costs, we meet in person with the client on a monthly basis, traveling to Asia regularly to review the inventions covered in their patent filings.
By patiently listening to their input and making strategic use of diagrams, we’ve been able to overcome the language barrier and greatly improve the quality of our client’s U.S. patent filings while at the same time significantly reducing costs. Working directly with the client has also helped us better understand their business and objectives – a critical component for effective representation.
Our frequent visits and in-person communication have helped us develop closer business and personal relationships with this global technology leader, creating a mutually beneficial model that helps Patterson & Sheridan provide meaningful service to all our international clients.
A Global Approach to Serving Clients
One of our US-based clients is a consumer products company with affiliates in China; the Chinese affiliates produce goods for sale in the US and Chinese markets. Protecting intellectual property originating in China for an international market is challenging and expensive due to differences in culture and languages. Working closely with our client, we’ve crafted a global approach that improves costs, efficiency, and the quality of the client’s patent applications.
For inventions conceived in China, the client files Chinese utility model applications which are inexpensive, rather informal and always result in a Chinese patent since they are not examined for novelty. For inventions deemed important enough to protect internationally, the client files PCT applications which are later extended into a number of jurisdictions, including the US. In the past, the PCT applications were essentially no more than a translated version of the Chinese utility model often having little disclosure in the form of written detail and drawings to provide support for claimed subject matter. In addition, the translations into English were also being prepared by non-technical personnel and errors were common. As a result, US and European applications were often rejected and any allowable subject matter could only be narrowly claimed.
To help the client improve the quality of these non-Chinese applications, we provide a combined translation and revision service prior to international filing. Our English-Chinese bilingual associates translate the original Chinese application to English and at the same time revise and enlarge the application adding additional subject matter and embodiments of the invention based upon discussions with their Chinese- speaking counterparts at the client’s facilities in Shanghai. The result is a high quality application that includes everything from the original Chinese utility model plus any other developments that have taken place during the priority year. The client pays a single, flat fee for the service that includes the translation. Furthermore, at prosecution stage, the same bilingual associate directly communicates with the Chinese inventors in Chinese for prosecution strategies, thereby saving the client costly translation fees for the office actions and English language communications.
International Experience and Technical/Legal Expertise Allows us to Quickly Protect a Client from Infringement Accusations
One of our large multi-national clients approached us when a competitor accused it of selling a device that infringed on the competitor’s Chinese patent. The device was made in Europe and being sold to a customer in China. Worried that it would lose the order, our client contacted us on a Thursday afternoon, US time, and asked us to determine whether the device infringed the Chinese patent. We did not know the Chinese patent number or the features of the accused device.
Working with the client’s executives and engineers in the European manufacturing facility, the client’s Chinese sales team, and local Chinese counsel, we were able to obtain detailed information concerning our client’s products, as well as an identification of the patent in issue. Because of our capabilities in Asian languages, in addition to our technical/legal expertise, we were able to quickly identify and explore the issues with our client. By Sunday afternoon, we were able to communicate our legal advice to the client, resulting in the customer maintaining the order with our client.
How We Draft and Enforce Non-Traditional Trademarks for America’s No. 1 Acoustic Guitar-Maker
At Patterson + Sheridan, our trademark services go above and beyond words. We have deep experience drafting and enforcing non-traditional trademarks that can protect a product’s shape, pattern or color.
You may not even realize that your consumer product has unique attributes that can be protected by trademark. We help clients identify unconventional characteristics that set their designs apart and that deserve to be protected.
Trusted by one the world’s most renowned guitar manufacturers
Taylor Guitars, the number-one manufacturer of acoustic guitars in the United States, has trusted us with protecting their iconic designs for years.
You know a Taylor guitar when you see one: Its headstock, bridge and pickguard each have very unique shapes. Most guitarists don’t even have to see the logo to know it’s a Taylor — these elements are a giveaway even from a distance. That’s what makes those shapes trademark-worthy.
Here’s the problem: Low-end manufacturers, mostly in China, often try to capitalize on popular products and copy their shapes. That’s exactly what we’ve seen happen with Taylor’s designs.
However, it’s difficult to use the courts as leverage against these foreign manufacturers because they can’t be sued unless they are caught trying to sell the product in the United States.
Proactive protection from trade shows to lawsuits
Our team doesn’t just sit in our office and cross our fingers. We get out of the office to educate clients on what they can do and actively protect their products in important locations where they do business.
For example, we regularly attend the NAMM (National Association of Music Merchants) Show to enforce Taylor’s marks. This event draws nearly 100,000 attendees each year and is described as "the world’s largest trade-only event for the music products industry.”
When we discover a counterfeit product at a tradeshow like this, we take a phased approach of sending warning letters (in English and Chinese) and sending agents to follow up with infringers. If they don’t heed those warnings, our team takes legal action.
We recently settled a lawsuit with a company that repeatedly sold infringing guitars at the NAMM Show, but that is just one among many. Our team continually attends trade shows from Germany to Shanghai to proactively protect our clients against counterfeiters.