Charles An
Associate
Design Patent Prosecution
Charles An is an associate patent attorney focusing on design patent preparation and prosecution. Prior to joining the Firm as a full-time associate, he worked as a summer intern, assisting in the preparation of an amicus curiae brief that was filed in the U.S. Supreme Court in the notorious Apple v. Samsung. The case involved the significant issue of design patent damages under 35 U.S.C. § 289.
While pursuing an undergraduate degree in biology, Charles gained firsthand experience in the healthcare field as a research associate, certified EMT-B, and volunteer Emergency Department Technician at the George Washington University Hospital. During law school, he was a member of the Student Intellectual Property Law Association and interned with the Office of the General Counsel at the United States International Trade Commission, where his focus was on Section 337 violations involving both patents and trademarks.
He received his B.S. in Biology at the George Washington University in 2012, where he later also received his Juris Doctor. In between those two degrees, Charles earned an M.M.S. at the Duke University Fuqua School of Business, where he garnered the Dean’s Leadership Award.
Articles
DesignLaw Knowledge
Color
Since May 13, 2015, when the U.S. began participating in the WIPO Hague International Design System, the requirements of a fee and petition under 37 CFR 1.184(a)(2)(i) stating that color drawings are the only practical medium for illustrating the claimed design were eliminated. Nevertheless, the specification must still include a statement that:
“The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.”
Because color drawings may now be filed in a design application without the need for a petition, applicants may prefer to represent color using color drawings instead of using graphic symbols, but 37 CFR 1.84(n) indicates that graphic drawing symbols and other labeled representations may be used for conventional elements where appropriate, subject to approval by the Office.
The following symbols should be used to indicate various materials where the material is an important feature of the invention:
Solid black surface shading is not permitted except when used to represent the color black as well as color contrast.
Reissue
A reissue application can be filed when there is an error in the patent which makes it inoperable. There are three categories of errors that an applicant can show on a reissue application. These errors include defective specification, claiming more or less than they had a right to, and other errors (typically inventorship or priority issues).
A design reissue application can be filed based on the “error” of failing to include a design for a patentably distinct segregable part of the design claimed in the original patent or a patentably distinct subcombination of the claimed design.
A reissue design application claiming both the entire article and the patentably distinct subcombination or segregable part would be proper under 35 U.S.C. 251, if such a reissue application is filed within two years of the issuance of the design patent, because it is considered a broadening of the scope of the patent claim.
