Six Things Every Inventor Must Know About Design Patents

Use this powerful new tool to build business value

By Bill Honaker, “The IP Guy”

Design patents are an important tool for getting value from your creations, and they’ve just gotten stronger. As an inventor or business owner, you must get full protection for your inventions.

Judge ruling

On September 15, 2023,  the Court of Appeals for the Federal Circuit (the Patent Appeals Court) issued a precedential decision in the case of Columbia Sportswear v. Seirus. The case involved the design of Heat Wave Material, a fabric used in the manufacture of outdoor gear like jackets and gloves.

The question the Court decided was, “What prior art can be considered when determining infringement?”

Design Patents

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’s 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.

Design Patent Infringement Overview:

Central to design patent infringement is the Ordinary Observer Test, established by the Supreme Court in 1871 in the case of Gorham Co. v. White. The issue was a new design for the handles of tablespoons and forks. The one on the left was the Gorham product, and the two on the right were the accused products.

The ordinary observer test states:

[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

Role of Comparison Prior Art

Comparison of prior art acts as a backdrop when examining a claimed and accused design. The ordinary observer considers the differences in the context of prior art designs. It helps differentiate between patented designs and potentially infringing products, especially when both are close to pre-existing designs.

The Court decided that to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim. This standard ensures clarity and consistency in determining design patent infringement. For a design to be considered as comparison prior art, it should be applied to the article mentioned in the patent claim. It’s about setting a consistent and clear boundary for a fair analysis.

This holding eliminates prior art that is not identified in the claim. In the Columbia Sportsware case there was prior art that related to a method of providing plastic sheets with inlaid stripes; a process for making unwoven fabric; and a breathable shell for outer wear. The Court didn’t opine on whether these were proper prior art, suggesting that the lower Court construe the claim term heat reflective material. Columbia argued that it means a material designed to reflect heat or metallic foil on a base material to reflect heat, while Seirus argues it is any material because all materials reflect heat.

This holding clarifies what can be considered comparison prior art. With artful claim drafting, a design patent owner can eliminate prior art that would otherwise limit the scope of protection.

Damages in Design Patent Cases

Design patents carry special damages for infringement. The patent owner can recover “total profits.”  Damages are calculated using the infringer’s total sales revenue 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 patent.   Seirus argued that if damages are awarded, the article of manufacture should be limited to the heat wave material, not the glove in which the material is used. The Court did not decide this point because there had been no infringement determination. This will be left for a future appeal.

Difference from Trademark Infringement

Design patent infringement and trademark infringement differ in their focus. Trademark infringement considers consumer confusion about the source of a product, whereas design patent infringement does not require this factor. Design patent infringement focuses on the visual similarity between the designs.

Unlike trademark infringement, design patent infringement does not hinge on the likelihood of consumer confusion regarding the source of the product. In design patent cases, the focus is on whether an ordinary observer would be deceived by the similarity of designs, regardless of source confusion.

Significance of Logos

An interesting nuance emerged from a previous appeal in this case: do logos play a role in design patent infringement analysis? As shown above, Seirus included its log throughout the design of its product. At trial, Seirus argued that an ordinary observer would not be deceived because of the logo. Trial counsel argued in closing that I don’t see how that’s possible because Seirus is telling the world “this is ours.” The Appeals court stated that while simply labeling a copied design with a different logo doesn’t excuse infringement, the placement, appearance, and ornamentality of a logo can be factored into the infringement assessment.

Logos are assessed differently in trademark and design patent contexts. For design patents, the emphasis is on the design’s overall similarity or dissimilarity rather than the logo’s potential to clarify product source.

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. This decision strengthens design patents. If your product has a unique appearance, a design patent will give you valuable protection and should be part of your IP portfolio.


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.

To get answers to your questions click here. To schedule a time to talk, you can access my calendar by clicking here, email, or call me at 248-433-7381.


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