Value in Underutilized Design Patents

September 22, 2016
News | Patents

Design patent protection is distinct from utility patent protection. Design patents protect the ornamental features of an article of manufacture rather than its utilitarian features. 35 U.S.C. § 171. In other words, a design patent protects the aesthetic appearance of a product or packaging, provided that it meets the novelty and non-obviousness requirements of the patent laws. The scope of the invention is defined by the drawings that are required for inclusion with the application.

A design patent is significantly less expensive to file, prosecute and maintain. The filing fees are less and the prosecution is usually quick. Unlike a utility patent, no maintenance fees are necessary to maintain a design patent in force for its entire term. A design patent has a term of 15 years from the date of grant.

The huge damage award given to Apple in the Apple Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015) case was largely based on Apple’s design patent and has brought renewed attention to this type of intellectual property. The projected number of design patent filings for 2016 is expected to exceed 40,000 applications, as compared to approximately 28,000 applications filed in 2010. This acceleration in rate of filings is much greater than with utility applications, as many industries are beginning to include designs as important components of their intellectual property portfolios.

Scope of Protection

A design patent generally offers relatively narrow protection, and is typically relatively easy to design around. However, certain claim strategies can be used to broaden the effective scope of design applications. The effectiveness of design patent claim strategies can especially be increased when likely competitors and/or significant design aspects of a product can be identified before filing.

Standard of Design Patent Infringement 

The standard for infringement of a design patent is whether an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.1

One successful example showing how this standard is applied was in 2010 when the Court of Appeals for the Federal Circuit (CAFC) ruled in favor of Crocs, Inc. on its appeal from the International Trade Commission (ITC) regarding infringement of its design patent D517,789 by multiple defendants. The court held, “[i]n one comparison after another, the shoes appear nearly identical. If the claimed design and the accused designs were arrayed in matching colors and mixed up randomly, this court is not confident that an ordinary observer could properly restore them to their original order without very careful and prolonged effort.”2

In cases where infringement can successfully be established, the remedies available to design patent can be better than those afforded to utility patents. 35 U.S.C. 289 provides an additional remedy wherein the infringer is liable to the owner to the extent of his total profit.3 In 2011, the court in Victor Stanley, Inc. v. Creative Pipe, Inc.4 found Creative Pipe liable for design patent infringement and awarded total profit damages plus prejudgment interest.

Other Advantages to Design Patents 

A design patent applicant may use the “patent pending” notation in connection with its product, without specifying that the application is for a design (as opposed to utility) patent. This can leave competitors guessing as to its subject matter until the application is published upon allowance.

Design Patents are much less expensive to file and prosecute than Utility applications. The total cost to patent a design, including government fees, drawing charges and legal fees, typically is less than $2,500.

Design Patents can also be obtained in much less time and with a much higher likelihood of success than utility patents. It is not unusual to obtain a design patent within a year of filing the application and we have found our chances of success to be around 95%.

The Hague Convention

US applications may now be filed under the Hague convention which allows for more efficient filing of international design patents. The Hague allows a single international filing to be used in all member countries similar to the Madrid protocol for trademarks. This can drastically reduce the cost of international filings for design patents.

We note that the US has the strictest requirements for design patent applications. It thus can be preferred to consult with US counsel when considering a design application which will be filed in other countries under the Hague to prevent difficulties when filing the international case in the US.

How to use Design Patents 

When properly utilized, a design patent is a complement to a utility patent, not an substitute for it. Design and utility patents can and should coexist. This is true for all industries. For example, Aventis Pharma S.A. received US D459,798 for the design of the pill forms of their drug compositions (See below).

Figure 1

By pairing a design patent with a utility patent, the patent owner can protect both the form and function of the product. Design patents offer an inexpensive, quick, and easy way to improve the robustness of a patent portfolio and should be considered when developing a patent strategy for protecting any product.

1 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed.Cir.2008). Established the standard for design patent infringement was whether an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. Id at 681.

2 Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 at 1306 (Fed. Cir. 2010)

3 35 U.S.C. 289 Additional remedy for infringement of design patent. Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties. Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.

4 Victor Stanley, Inc. v. Creative Pipe, Inc. 2011 WL 4596043, D.Md.


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