Patent attorneys tend to focus on utility patents rather than design patents. Utility patents issue for "any new and useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof." Design patents issue for "any new, original and ornamental design for an article of manufacture." In short, a utility patent protects a product's function while a design patent protects a product's looks.
Why do design patents get little attention? Part of the problem is the common myth that a design patent's narrow protection translates into little value. Detractors ask don't they merely prevent exact copying of the invention shown in the drawings? When assessing patentability, aren't we limited to considering ornamental features, and not able to leverage functional features contributing to performance? Can't a defendant readily design around to avoid infringement? Yes, it is hard to argue in favor of design patents, but somehow companies like to copy products that look cool. How much is that copying worth? Sometimes a lot. For example, about $500 million in damages in Apple v. Samsung was due to infringement of design patents.
Why don't they command more respect? Some patent attorneys are to blame as they raise such questions. Most patent attorneys like technical and legal challenges. We want to write a detailed document that elucidates a complex technology so even a layperson understands it, admires it, and upholds it in court. And yes we like an undertaking that can justify our legal fees!
But a design patent -- what's the challenge? It's more work than a trademark application, but isn't a design application: (1) a design application transmittal form; (2) an inventor's declaration; (3) a title; (4) a brief specification with a statement what is claimed is shown in the drawings; and (5) the drawings? Even prosecution is simple compared to utility applications. Professor Dennis Crouch recently noted in Design Patents are Still Relatively Quick "the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents issue without substantive rejection or amendment."
They are also inexpensive to prepare (AIPLA Economic Survey 2011 says the median price is $1500 in 2010) and prosecute: we compare the design drawings to prior drawings during prosecution. And the PTO typically allows the design application or issues rejections that can be overcome by amendment. Of course you need to foreign file within six months of filing in the USPTO, and remember the patent term runs 14 years from the issue date, soon to be 15 years.
On the other hand, I don't think one can delegate the preparation of design patents entirely to an assistant, because the scope of the protection is a legal judgment. It relates to the content of the drawings. In fact, the content matters a great deal when it comes time to determine whether or not a design patent is infringed. A design drawing should not include any superfluous information (e.g., patent owner's name). Trust me the patent owner's name won't be anywhere on the accused product. Structures that are not part of the design can be shown by broken lines to avoid unduly narrow protection. Thus, the design patent may (should) cover only a part of the entire article. For example, if you seek to protect a computer icon with a design patent, showing other icons on the same desktop is a really bad idea! Because design patents are inexpensive, protect against exact copying, and can be surprisingly valuable when the patented product looks cool, I expect many to follow Apple to get design patents to protect the way a product looks.
Copyright © 2013 Robert Moll. All rights reserved.
