Don’t Forget Design Patents

Design patents can be powerful

Design patents protect the appearance of products. Specifically, design patents protect, “any new, original and ornamental design for an article of manufacture.” In contrast, the more common utility patent protects functional features.  Specifically, utility patents protect, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Occasionally, some inventions can be protected by both design and utility patents, although it is more common to only obtain one or the other.

Probably the most famous design patent case was Apple v. Samsung.  This case included both design and utility patents. There were four design patents involved covering various features of the iPhone. D618,677 covered the slot for the speaker, black front face, and rounded corners; D593,087 covered a rectangular front face with rounded corners, a home button, and a raised rim; and D604305 covered the icon grid. The jury awarded Apple $533 million for Samsung’s infringement of these three design patents while awarding only $5 million for infringing two of Apple’s utility patents.

The award was higher for the design patents because they have special damages for infringement. The patent owner can elect “total profits” (the “infringer’s profits”) as an alternative to the traditional damages of a reasonable royalty. “Total profits” damages are calculated using the infringer’s total sales, and subtracting appropriate costs and expenses. The award of profits is based on the sales of the “article of manufacture” that bears the design protected by the design patent. In the Apple case, it was based on Samsung’s profits from the sales of their infringing phones.

The test for design patent infringement is also different. A utility patent is infringed when each limitation of a claim is found in the accused product. Infringement can be avoided if the accused product is missing one limitation. Since utility patents typically have several claims with each claim having several elements, finding infringement can be difficult.

Design patents have a single claim that refers to the drawings illustrating the invention. The legal test for design patent infringement is the “ordinary observer test.” Infringement is found when the “accused design [is] so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, inducing him to purchase one, supposing it to be the other.” Basically, if the accused product and the unique design illustrated in the patent appear deceptively similar to a purchaser, the patent is infringed.

Unfortunately, design patents are often misunderstood. The common thought is that they are difficult to obtain, held unenforceable by courts, and hard to prove infringement, but this is not true. A recent article by Professors Sarah Burstein (University of Oklahoma) and Saurabh Vishnubhakat (Texas A&M University) published in PatentlyO, debunked the commonly-held beliefs. They found that over the last 25 years, the allowance rate for design patents in the US is more than 85 percent.  From 2008 thru 2020, district courts found design patents valid 88.4% of the time. Over that same period, courts found infringement more than 50% of the time, and since 2015, infringement findings have been above 80%. These are very strong numbers supporting design patent protection.

Another difference between design patents and utility patents is the term. A design patent has a term of fourteen years after issue (if filed before May 13, 2015) and if filed on or after May 13, 2015, it has a fifteen-year term from the date of issue.  Utility patents have a term of twenty years from their earliest filing date, if you pay the required maintenance fees at 3.5, 7.5, and 11.5 years. Design patents do not require the payment of maintenance fees. Since the average time from filing to getting a utility patent is more than 25 months, the actual terms are not that far apart.

The Takeaway

Don’t forget about design patents. A product’s appearance can be its best-selling point, something Steve Jobs knew well. Protect that valuable feature with a design patent.

Bill Honaker
Bill Honaker, The IP Guy

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

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