Professor Sarah Burstein will join the Suffolk Law faculty this summer. A nationally recognized expert in design patents, her opinion is regularly sought by national news outlets, including the Wall Street Journal, National Public Radio, Reuters, Wired, Forbes, Time, and Bloomberg Law. 

Burstein’s scholarly work addresses questions about the nature of design patents, which provide legal protection for the visual aspects of a product. Her educational background in art and design, including painting, has been critical to her legal work over the years, she says. Several of her papers explore the precise meaning of key legal terms in U.S. design patent law, including her 2018 paper in the Harvard Journal of Law and Technology.

Her work has made quite an impact in the IP community–all the way up to the Federal Circuit Court of Appeals. Burstein’s conceptualization of “a patented design” was cited by the Federal Circuit in a 2019 case.

Her twitter account, @design_law, explores the good, the bad, and the ugly sides of design law.

Suffolk Law’s IP Program’s Director Jenn Karnakis recently sat down with Professor Burstein to learn more about her.

Did you have a “eureka!” moment when you realized that design patent law was an area that you wanted to delve into?

I began my career doing IP litigation, including one case that involved a design patent. I started researching design patent law and discovered that, at that time, most of the commentators writing about design patent law had science and technical degrees and backgrounds. No one really seemed to have studied areas like art theory, art history, and design principles. There was no one who had actually done these things and put them into practice.

Even after my limited research as a junior litigation associate, it seemed there were a lot of big, open questions that were not getting much attention, let alone answers. I thought this was an area where I could have a lot to add to the discussion.

Given my art and design background, I was able to delve into overarching questions like “What even is a design?” using basic principles from an introductory art theory course that I took as an undergrad. These principles continue to guide my scholarly work all these years later.

How would you characterize your recent scholarly work and research?

One of my recent pieces, Whole Designs, is really informed by the principles that I learned studying and making art. I try to use concepts from art theory in analyzing design patents, principles like how the negative space in a design matters, how the use of repetition matters, and so on. I realized that all of these elements that were basic to me, coming from an art background, were not necessarily basic to everyone. Once you've actually made things, you have a different understanding of what design is. Looking at design with a lens from science or engineering or even from a utility patent lens does not always translate well.

What’s your favorite case to share with someone who isn’t familiar with design patent law?

My favorite teaching case is High Point Design LLC v. Buyers Direct, Inc., which covers fuzzy slippers. Yes, that’s right, a case about fuzzy slippers manages to provide two Federal Circuit opinions (one published; one unpublished) that cover almost every single issue that commonly arises in design patent law. It’s a good case to show what’s going on in design patent these days. And I have it on good authority that both versions of the fuzzy slippers in dispute are very cozy!

What’s one thing that Suffolk Law students should know about you?

Come to talk to me! Whether individually or in small groups—whatever feels comfortable. Don’t worry about bothering me, please take up my time, whether you want to talk about IP, careers, or even your favorite show on Netflix. I love getting to know my students and hearing what they're doing and learning how I can be able to help them. My door is always open!

The topics I teach are not easy, but they are important and valuable. Law is messy and can be difficult, but that’s the question: What do we do when the law is messy and difficult? We can figure it out together!