The epic smartphone design patent battle -- Apple v. Samsung -- brought design patents out of the shadows and into the spotlight for the first time.
In truth, companies have been using design patents quietly and successfully for years. Medical device companies protect their implants and drug delivery devices. Consumer health companies protect their replacement toothbrush heads and razor cartridges. Automobile companies protect fenders and body panels. Companies offering mobile apps and other web tools protect the appearance and “feel” of their online user experience.
Design patents have been around a long time.
The first design patent was issued in 1842 and, in 2014, the U.S. Patent and Trademark Office (USPTO) issued more than 36,000 of them. Designs can be protected with design patents (or design registrations, as they're also called) in many other countries in the world. The World Intellectual Property Organization reports that almost 3 million design patents/registrations were in force by 2013. Companies selling products overseas or those having their products manufactured overseas turn to design patents as an elegant way of building a world-wide safety net to protect their products’ appearance from duplication or “inspired” follow-on products made by others.
In the past five years, many household names -- Microsoft, Procter & Gamble, Nike, Goodyear, Ford -- have turned to design patents to protect their products. Top overseas recipients include Samsung Electronics, Sony, LG, Honda and Toyota.
What is a design patent?
Simply put, design patents protect the way an article looks. Utility patents protect the way that an article works or is used.
While it's not necessary to actually make or sell the article shown in the design patent, the underlying article must be a commercial product, capable of some function. U.S. design law also permits patents to claim only portions of articles, however, the more focused the design patent, the more scrutiny will be placed on each element when determining infringement.
The USPTO classifies design patents into 33 different classes, including:
- Measuring, Testing or Signal Instruments -- HVAC control devices such as Nest’s Learning Thermostat
- Recording, Communication or Information Retrieval Equipment -- Smartphones, Bluetooth headsets and graphical user interfaces and icons
- Photography and Optical Equipment -- wearable display devices such as Google Glass and Oculus Rift headset
- Medical and Laboratory Equipment -- auto injectors, infusion pumps and pharmaceuticals
- Lighting -- LED light sources, lighting fixtures
How do you get a design patent?
Like utility patents, the USPTO issues a design patent after an examination process that includes consideration of the quality and clarity of the drawings of the design and whether the design is new and not an obvious variant over existing designs.
A design patent may claim all or only an innovative part of a design. And because design patents can include only one patentable design per patent, designers often find it useful to get more than one design patent per product -- covering different sub-aspects or iterations of a single product. Luckily, design patents typically cost only a fraction of their utility patent cousins to prepare and prosecute. Also, design patents, on average, issue in about 15 to 18 months from the time of filing -- substantially faster than utility patents. A design patent remains in force for 14 years from the date of issue.
Why would my company need design patents?
Design patents serve three broad, sometimes overlapping, protection goals.
First, design patents protect against wholesale copying of product designs by counterfeiters. Second, design patents keep secondary marketers from making “compatible” replacement parts. And, third, design patents ensure that competitors maintain a wide swath between the look of the patent holder’s products (and their hard-earned brand recognition) and the competitor’s products.
But remember, design patents typically complement, rather than compete with other forms of IP protection. Many design patent holders still get utility patents to protect their innovative ideas and trademarks to protect their source identifying marks and designs. Each of these forms of protection have different eligibility requirements and serve different purposes, but together they can be used to protect your company’s hard work from copyists and competitors.
How does enforcement of a design patent work?
While Apple v. Samsung made headlines, many design patent holders report rarely resorting to filing a lawsuit to enforce their rights.
A comparison of the number of patents issued in 2013 with the number of infringement suits filed that same year suggests that it's nearly three times more likely that a patent infringement lawsuit will involve a utility patent than a design patent. But for those who do file suit, the damages awards following a finding of design patent infringement can be generous -- the law provides for the total damages of the infringer’s product.
More than a century ago, Congress created this damages provision recognizing the important role that product design plays in the sale of the product. This damages provision can provide incentive for the litigants to settle a suit well before the case progresses closer to a verdict.
So if design patent holders aren’t filing lawsuits, then what are they doing with their intellectual property? It seems that they are using the leverage created by the damages provision to stop infringing designs as early as possible. First, these design patent holders comprehensively mark their products with their design patent numbers (or “patent pending” if the patents have not yet issued). This puts everyone on notice of the patent holder’s rights.
Then, many companies are monitoring sales of competing products or counterfeits and sending warning letters, advising the competitors and copyists of their design rights and asking them to stop selling the product. Over time, these companies build a reputation for actively protecting their designs and asserting their rights, encouraging others to go in a different direction when designing their new products.
Design patents are also a powerful tool at the borders of many countries to stop infringing products before they hit the store shelves. In 2014, the European Union enacted a new Customs Regulation, giving Customs authorities expanded powers to detain suspected infringing goods and new powers to detain and destroy small numbers of goods imported into the EU without the need for a judicial determination of infringement. For larger amounts of goods, EU Customs can destroy the goods if the importer doesn't object after getting notice of the detainment. Similar options are available to detain goods at the borders in many other countries, including China.
Are design patents a good value?
More than one study has determined that the public’s awareness of design and preference for “good” design has grown in the past decade. Kickstarter has successfully funded more than 4,000 projects in its “Design” category, garnering more than $197 million in pledges.
Moreover, good design can be good business. It can reduce user error, such as proper self-administration of medication or making a user’s experience more efficient and less frustrating, such as using a smartphone or mobile app. For mobile developers, because there's no physical product the user can touch, there's also an intense need to develop a unique user experience to separate their work from others, and strong design aids in that effort.
Finally, in crowded technical fields, the product may be a mix of existing technologies, and the opportunity for utility patents may be narrow, such as in robotics or autonomous vehicles. As a result, design patents can serve as one way to protect your product while you build consumer loyalty and eventually trademark rights.
As a result, many companies are considering the packaging of the product as much as the function of the product itself and investing big in design. Such investments deserve to be protected, and design patents are one cost-effective way to do so. Today’s smart companies, both big and small, are using design patents as part of a comprehensive intellectual-property strategy.
Elizabeth Ferrill, partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, contributed to this article.