Federal Circuit - In re Surgisil - Favorable to Grant of Design Patents

The USPTO grants three types of patents: utility, design, and plant. Utility patents issue for new and useful processes, machines, manufactures, compositions, and improvements thereof. Plant patents issue for new and distinct plants, and design patents issue for new designs of article of manufacture.

When you read about patents, nearly always people talk about utility patents rather than design patents. Yes, utility patents can protect technology advances in software, hardware, products, and drugs, but design patents also have an important role. Thus, if an invention's appearance is new, you should consider seeking a design patent, because it is relatively inexpensive compared to seeking a utility patent, it may support large damage awards, and it can stop copyists.

Further, the Federal Circuit’s recent decision In re Surgisil has made it easier to obtain a design patent. There, the Federal Circuit held that 35 U.S.C. 171 grants design patents for articles of manufacture rather than for shapes in the abstract. It is not as USPTO argued: "appropriate to ignore the identification of the article of manufacture in the claim." The Federal Circuit held prior designs only anticipate (i.e., block issuance) if they are identical in shape to the claimed design and relate to the same article of manufacture. Thus, a drawing stump (used by illustrators) with the same shape did not anticipate a claim for an ornamental design for a lip implant. It's unclear if "related articles of manufacture" will become the ground of an obviousness rejection, but it should help applicants overcome anticipation rejections based on similar shapes for different articles of manufacture.

Copyright © 2021 Robert Moll. All rights reserved.

US Supreme Court - Apple v. Samsung - Reverses Apple's Award of $399M for Infringement of Apple's Design Patents

In Samsung Electronics Co. Ltd. v. Apple Inc., the US Supreme Court reversed the Federal Circuit's $399 million award to Apple for Samsung's infringement of Apple's design patents.

As background a design patent is limited to "any new, original and ornamental design for an article of manufacture." 35 USC 171. A design patent seeks to protect appearance. When infringement occurs a design patent holder may elect infringer's profits as a remedy. This is sought when profits exceed a reasonable royalty. US patent law states one who "applies the patented design ... to any article of manufacture ... shall be liable to the owner to the extent of his total profit ... but the owner shall not twice recover the profit made from the infringement." 35 USC 289.

Before the Federal Circuit Samsung had argued Apple's design patent applied to the case, while Apple argued it applied to the entire phone. The Federal Circuit agreed the "article of manufacture” was the entire phone, which, of course, includes hardware and software having considerable value.

Based on Samsung's petition for certiorari the Supreme Court agreed to consider the question: Where a design patent is applied to only a component of a product, should an award of infringer's profits be limited to those profits attributable to the component?

Before the Supreme Court Samsung argued the Federal Circuit held a district court need not exclude unprotected functional features from a design patent's protected ornamental scope and a design-patent holder is entitled to an infringer's entire profits from sales of any product found to contain a patented design without regard to the design's contribution to that product's value or sales, resulting in an award in profits far beyond the value of any inventive contribution.

The Supreme Court was persuaded and held Apple’s patented design applied to the case rather than the entire phone and more broadly stated the "article of manufacturer" may mean not the end product (i.e., phone) sold to consumers but a component of the end product.

The Supreme Court's decision to reverse an award based on Samsung's profit on its entire phone makes sense because to hold otherwise ignores the value of the hardware/software. What's missing in this decision, however, is guidance on how to determine the value of the case. I think the court should determine that value in light of the fact people give importance to how a smartphone looks, which of course is why more than Apple chose to go with the patented design.

Also see my related post: Supreme Court - Apple v. Samsung - SCOTUS Blog - Justices cautious about resolving Samsung-Apple dispute over design of cell phones.

Copyright © 2016 Robert Moll. All rights reserved.

Supreme Court - Apple v. Samsung - SCOTUS Blog - Justices cautious about resolving Samsung-Apple dispute over design of cell phones

Professor Ronald Mann's blog post Justices cautious about resolving Samsung-Apple dispute over design of cell phones indicates the Supreme Court was unsettled at the oral hearing on the legal standard to apply to the $400 million damages awarded for Samsung's infringement of Apple's design patents.

The case turns on the proper interpretation of 35 USC 289 stating: "whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design ... 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 ...."

As Professor Mann stated: "The issue is whether the 'article of manufacture' to which the infringing design feature has been applied is the cell phone itself (as the court of appeals concluded) or some difficult-to-specify subsidiary portion of the phone, perhaps the case or exterior."

The Federal Circuit previously decided the article of manufacture is Samsung's phone, but all at the Supreme court hearing seem to agree it's too much to conclude "the article of manufacture" for calculating profits is the entire phone. We have the infringement of design patents that show the exterior screen and case. Should that infringement include the value of thousand of features in the software/hardware inside? I don't think so but it is also important to consider what drove the sale. I think just talking about how much physical structure is shown in the design patent misses this. Whatever way you come out, I think design patent damages is important to fairly resolve in an environment where injunctive relief is not awarded even when a competitor appears to have applied design patent to its product.

Copyright © 2016 Robert Moll. All rights reserved.

San Jose Mercury News - Apple v. Samsung: Court Rejects Latest Appeal

If you are interested on the latest on the Apple and Samsung patent infringement battle, the San Jose Mercury News reports Apple v. Samsung: Court Rejects Latest Appeal.

Copyright © 2015 Robert Moll. All rights reserved.

Hague Agreement Concerning the International Registration of Industrial Designs - Effective on May 13, 2015

As a reminder, US applicants will be able to file an international design application with either the World Intellectual Property Organization (WIPO) or the USPTO through the Hague Agreement concerning the International Registration of Industrial Designs (the Hague Agreement) on or after May 13, 2015.

The design application filed under the Hague agreement can contain one or more inventions and designate one or more of the 64 countries that are party to the Hague agreement. A US design patent resulting from an application filed under the agreement will have a 15-year patent term from the issue date.

USPTO website details: Hague Agreement Concerning International Registration of Industrial Designs.

See my related articles: USPTO - Hague Agreement - Single Design Patent Application Registers up to 100 Designs in Over 62 Territories and USPTO - US Residents Filing A Design Application under Hague Agreement?

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Hague Agreement - Single Design Patent Application Registers up to 100 Designs in Over 62 Territories

The USPTO announced US applicants will be able to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple countries on or about May 13, 2015.

Under the Hague system for the protection of industrial designs, US applicants will be able to register up to 100 designs in over 62 territories. Hopefully, this will greatly lower the cost of seeking foreign patent protection on designs.

Here is details from the USPTO announcement:

"U.S. innovators will soon have more options for pursuing multijurisdictional protection for new industrial designs

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs). This marks the last step in the membership process for the United States to become a Member of the Hague Union. The treaty will go into effect for the United States on May 13, 2015.

Currently, U.S. applicants wishing to pursue protection for industrial designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions where industrial design rights are desired. When the Hague Agreement enters into force for the United States, it will be possible for U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies. The Hague system for the protection of industrial designs provides a practical solution for registering up to 100 designs in over 62 territories with the filing of one single international application.

“U.S. accession to the Geneva Act of the Hague Agreement will provide applicants with the opportunity for improved efficiencies and cost savings in protecting their innovative designs in the global economy,” said Deputy Under Secretary for Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “We are extremely excited about joining the Hague Union and contributing to the continued expansion and development of the Hague system which facilitates protection of industrial designs in design registration and examination systems alike.”

The Hague system offers applicants increased filing efficiencies and potential cost savings in pursuing protection for their innovative industrial designs. As envisioned under the Geneva Act, the United States will continue to substantively examine design applications and to grant design rights in the form of U.S. design patents, whether the application is filed pursuant to the Hague Agreement or as a United States design patent application.
USPTO will soon publish the Final Rules governing USPTO processing and examination of international design applications filed pursuant to the Hague Agreement in the Federal Register. The Agreement, Title I of the Patent Law Treaties Implement Act of 2012 (the implementing legislation for the Hague Agreement in the United States), and the USPTO’s Final Rules are all expected to go into effect on May 13, 2015. U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term.

The Hague system (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs) is expected to experience significant growth over the next few years with recent and expected additions of several countries to the member list. In addition to United States membership taking effect on May 13, 2015, South Korea became a member effective July 1, 2014, and Japan is expected to become a member in the same time period as the United States. Canada, China, and Russia are also among the countries exploring membership in the near future.

For non-press inquiries please contact David Gerk, Patent Attorney, Office of Policy and International Affairs (OPIA) at 571-272-9300."

Copyright © 2015 Robert Moll. All rights reserved.

Expediting Examination of U.S. Design Patent Applications - Capturing the Value at the Front of the Patent Term

Applicants are seeking U.S. design patents at record rates, but it is important to understand that design patents may be valuable for only a short time. I am not speaking of the 14-year design patent term, but the fact the world may initially "love" a design than view it as "out of date" just a few years later. For example, each new version of the iPhone somehow makes prior versions look out of date.

Thus, when the design relates to rapidly evolving technology, expediting examination may be important to quickly capture that commercial value and prevent infringement. Although the PTO examines design applications faster than utility applications, expediting examination of design applications may be worth it in certain cases.

Thus, 37 CFR  § 1.155(a), effective since September 8, 2000, established a procedure for applicants who conducted a preliminary examination search and request expedited examination along with the 37 CFR 1.17(k) fee:

(a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination:

(1) The application must include drawings in compliance with § 1.84;
(2) The applicant must have conducted a preexamination search;
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k);
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.

(b) The Office will not examine an application that is not in condition for examination (e.g, missing basic filing fee) even if the applicant files a request for expedited examination under this section.

Another mundane patent procedure? Maybe, but it could increase the chance a design patent will be granted before the world moves on to something new!

Copyright © 2014 Robert Moll. All rights reserved.

US Design and Utility Patents - How Do They Differ?

Don't let the term "patent" confuse you, design patents and utility patents are different forms of legal protection. Generally, a utility patent, which is what most people mean when they don't specify what type of patent, protects the way an invention works or is used (35 U.S.C. 101). In contrast, a design patent protects the way the invention looks (35 U.S.C. 171). Making it confusing at times, an invention may be eligible for one or more design patents and/or utility patents!

Some of the other differences between US design and utility patents are as follows:

1. Patent term: An utility patent application filed on or after June 8, 1995 has 20-year patent term from the earliest effective U.S. filing date (subject to any patent term adjustment, e.g., for PTO delay), while the term of a design patent is 14 years from the issue date (35 U.S.C. 173).

2. Maintenance fees: For a utility patent to remain in force, one must pay maintenance fees 3.5., 7.5., and 11.5 years (extendible six months with a surcharge fee) from the issue date (37 CFR 1.20), while design patents require no maintenance fees.

3. Claims: Design patents have a single claim, while utility patents typically have multiple claims.

4. Restrictions: The Examiner has discretion whether to restriction on multiple inventions in a utility application, but it's mandatory in design patent applications (MPEP § 1504.05).

5. International applications: the Patent Cooperation Treaty (PCT) permits extending foreign deadlines for multiple countries for utility patents, while design patents await implementation of Hague agreement hopefully late 2014.

6. Foreign filing deadlines: utility patent applications have up to 12 months after the first filing, while design application only have up to 6 months (35 U.S.C. 172). Don't forget this difference!

7. Provisionals: Utility patent applications may claim the benefit of a provisional application, while design patent applications cannot.

8. Request for Continued Examination: Available for utility patents application, but not for design applications.

9. Continued Prosecution Application (CPA): only available for design applications today.

10. Publication of Application: Required for all utility patent applications unless foreign filing rights are waived by the applicant, but design applications are not subject to publication.

This is a plain English version of MPEP 1502.01. See MPEP 1500 Design Patents for details.

Copyright © 2014 Robert Moll. All rights reserved.

Stanford Technology Law Review - Design Patents in the Modern World

Design patents have become an important topic in US patent law. Formerly viewed as the "weak sister" of utility patents, the large damage awards in design patent infringement cases such as Apple v. Samsung have a way of changing everybody's mind.

Today, Ms. Anna Sallstrom, Editor in Chief, Stanford Technology Law Review, sent an email that the Stanford Technology Law Review has published the presentations given in Design Patents in the Modern World conference held at Stanford Law School in 2013:

Progress and Competition in Design
by Mark McKenna & Katherine Strandburg

Functionality and Graphical User Interface Design Patents
by Michael Risch

Virtual Designs
by  Jason Du Mont & Mark Janis

(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of “Article of Manufacture”
by Andrew Torrance & William Seymour

A Rational System of Design Patent Remedies
by Mark Lemley

Overlapping Intellectual Property Doctrines: Election of Rights Versus Selection of Remedies
by Laura Heymann

Design Patents: Law Without Design
by Peter Lee & Madhavi Sunder

Moving Beyond the Standard Criticisms of Design Patents
by Sarah Burstein

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - US Residents Filing A Design Application under Hague Agreement?

Can US residents file an international application for a design patent?

When I first reviewed this question, I checked to see if the PCT allows for design patent applications. The PCT permits filing a single application in English that starts the process of seeking protection of the invention in many countries. Although not strictly a patent application, a PCT gives applicants an 18-month extension past the convention year to consider whether the cost of foreign filing is justified while keeping the benefit of the priority filing date.

However, the PCT does not permit filing a design application. Instead, an international design application must be filed under the Hague Agreement Concerning International Registration of Industrial Designs, 35 USC 381- 390, Title I of the Patent Law Treaty that President Obama signed into law on December 18, 2012.

It may appear a US resident can file a Hague application in the USPTO today, because 35 USC 382 states any person who is a national of the United States, has a domicile, a habitual residence, or a real and effective industrial or commercial establishment, may file an international design application in the USPTO.

However, a USPTO staff member informed he expects legislative processes to delay the ability for US residents to file Hague application until late 2014. First, the Senate must consent to a complete package of laws, since it's a Treaty. Although 35 USC 381-390 is law, the USPTO proposed rules are still open to public comments. The USPTO must review the comments and make any revisions to the proposed rules to produce the final rules. After this Senate consent requires Senate Foreign Relations Committee recommendation and 2/3 or more of Senators to vote in favor of the complete package.

Until that day, US residents may still file a Hague application in a country (i.e., Hague contracting state outside the US) if the applicant has a "real and effective industrial or commercial establishment" in the country. What's a real and effective industrial or commercial establishment is determined by that country's laws. It may not require applicant have its principal place of business in that country, but the more business activity in a country the more likely the Hague application will be valid. Thus, operation of a warehouse may not suffice, while a manufacturing factory might. A third party distributor or a subsidiary might not suffice, while applicant's sales office might. As was explained to me, "the establishment must be operated by the applicant, rather than merely with the applicant’s consent or approval" and not a "sham establishment." Finally, a Hague application on this basis would typically require engaging a foreign associate knowledgeable with the specific requirements of that country.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Written Description Requirement for Design Applications

The USPTO is hosting a roundtable and soliciting public comments on how the written description requirement should be applied to design applications on March 5, 2014.

As background at the Design Patent Conference Design Day 2013: Designs in the New Digital Age on April 23, 2013, an attendee asked whether an originally disclosed design provides an adequate written description where a new or amended claim is presented or where a claim is made for an earlier effective filing date under 35 U.S.C. 120.

More specifically, the USPTO is considering how the written description requirement under 35 U.S.C. 112(a) is applied to design applications where only a subset of elements of the original disclosure are shown using solid lines in an amendment or continuation application."

See the USPTO Request for Comments and Notice of Roundtable Event on the Written Description Requirement for Design Applications.

Copyright © 2014 Robert Moll. All rights reserved.

Stanford Technology Law Review - Design Patents in the Modern World

The Stanford Technology Law Review appears to have joined Berkeley Technology Law Journal as a leader in law review coverage on emerging intellectual property topics.

One emerging topic in US patent law is design patents. The huge damage awards for infringement of design patents in Apple v. Samsung raised the importance of seeking design patents. It also highlighted the need to better understand the law surrounding the patentability, infringement, and remedies of design patents.

Today, Ms. Anna Sallstrom, Editor in Chief, Stanford Technology Law Review, sent me an email noting that STLR is publishing the presentations given in Design Patents in the Modern World conference held at Stanford Law School in 2013. Specifically, the following eight articles by leading scholars will be available online at http://stlr.stanford.edu this winter:

A Response to the Standard Criticisms of Design Patents
by Sarah Burstein

Rights, Remedies, and the Doctrine of Election
by Laura Heymann

Virtual Designs
by Mark Janis & Jason Du Mont

A Rational System of Design Patent Remedies
by Mark Lemley

Functionality and Graphical User Interface Design Patents
by Michael Risch

Progress and Competition in Design
by Katherine Strandburg & Mark McKenna

Law Without Design
by Madhavi Sunder & Peter Lee
     
(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of “Article of Manufacture”
by Andrew Torrance & William Seymour

Copyright © 2013 Robert Moll. All rights reserved.

Design Patents on Virtual Designs

Virtual Designs to be published in the Stanford Law Review in 2013 appears to be worth reading. Thanks to Professor Dennis Crouch for his Patently-O blog that drew attention to Microsoft IP Fellow Jason J. Du Mont and Indiana University Law Professor Mark Janis's comprehensive article on design patenting of virtual designs such as graphical user interfaces and icons on smartphones and tablets.

Copyright © 2013 Robert Moll. All rights reserved.

Professor Risch - Functionality and Graphical User Interface Design Patents

Apple's $1B damage award (now being retried) caught the attention of anyone awake in the patent community about the importance of design patents. Much less understood was how to analyze design patent protection of graphical user interfaces (GUIs). The problem is GUIs raise a difficult line drawing exercise between ornamental elements (appearance) that design patents are intended to protect and functional elements that are not.

Professor Risch's Functionality and Graphical User Interface Design Patents, to be published in the Stanford Technology Law Review, is a timely article discussing among other things the design patent relating to the Apple iPhone home page and the line drawing problem.

Professor Risch says the article answers three questions:

"1. Aren’t GUIs something that should be protected by copyright only? Why should there be a patent? The answer is relatively simple: the law has, since 1870, contemplated dual protection. The article traces the history to explain why the law could have evolved differently, but simply did not.

2. Display screens change, both before and after sale. How can someone patent an ephemeral screen design? It also turns out that ephemeral designs have been protected for some time. Even so, the article proposes some limitations on the protection of GUIs that should address the special nature of GUI design patents.

3. There are many differences between Apple’s patent and Samsung’s product. How can Apple own the idea of square icons in a grid with a dock bar at the bottom? This last question is the most intractable: determining when a design is infringing, and the role that functionality should play in that consideration. The bulk of the article is dedicated to answering this question.

To answer the third question, the article draws on lessons from prior copyright disputes about GUIs. It first suggests that courts must act as gatekeepers, rather than allowing juries to determine which elements to disregard as functional. It then develops economic factors that can help the court determine whether a design element is functional, and whether to allow reuse by a competing program."

I  am still reading it, but want to pass it along as it should give insight to anyone considering design patent protection of GUIs.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - Changes to Implement the Patent Law Treaty

On October 21, 2013, the USPTO published Changes to Implement the Patent Law Treaty which will implement some revisions to the rules of practice before the USPTO that may help some recover patent rights in some situations so are worth reading. Here is the summary that the USPTO provided:

"The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. This final rule revises the rules of practice for consistency with the changes in the PLT and title II of the PLTIA. The United States Patent and Trademark Office (Office) is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking.

The notable changes in the PLT and title II of the PLTIA pertain to: The filing date requirements for a patent application; the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.

This final rule also revises the patent term adjustment provisions to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application, and contains miscellaneous changes pertaining to the supplemental examination, inventor’s oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA)."

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - IP Awareness Assessment

If you are interested in knowing more about IP without receiving a legal bill from your attorney, you may want to check out this new feature on the USPTO web site. The USPTO and the National Institute of Standards and Technology Manufacturing Extension Partnership developed an online IP Awareness Assessment which covers IP strategies, best practices, international IP rights, IP asset tracking, licensing technology to others, and using technology of others. It covers five categories of IP: copyright, design patents, trademarks, trade secrets, and utility patents. The assessment is free and takes 10-30 minutes.

Copyright © 2013 Robert Moll. All rights reserved.

ITC Excludes Samsung Products Infringing Apple Patents on August 9, 2013

On August 9, 2013, the ITC issued an order to exclude and a cease and desist order on the further importation, sale, and distribution of certain Samsung products because they infringe U.S. Patent No. 7,912,501, entitled, Audio I/O headset plug and plug detection circuitry, U.S. Patent No. 7,479,949 B2, entitled, Touch screen device, method, and graphical user interface for determining commands by applying heuristics.

It was not a complete sweep for Apple given the ITC found no infringement of Design Patent No. D618678 that relates to the appearance of the iPhone, Design Patent No. D558757 that relates to the appearance of the iPod Touch and iPad, and US Reissue Patent No. RE41922, entitled, Method and apparatus for providing translucent images on a computer display. The ITC also found U.S. Patent No. 7,789,697, entitled, Plug detection mechanisms invalid as anticipated by the prior art.

The order is stayed for 60 days pending President Obama's review. That review is likely to be politically charged in view of the Obama Administration's veto of Samsung exclusion order last week. Perhaps the prior Administrations were wise to not interfere with ITC over the last three decades. Now that the Obama Administration has taken on the rarified role of "second guessing" the ITC, others may be justified in guessing whether or not this has anything to do with Samsung's status as a foreign company.

Copyright © 2013 Robert Moll. All rights reserved.

US Design Patents - Increasing Value Today

Here's an interesting article that focuses on the increasing value of U.S. design patents in the mobile computing patent wars: Apple-Samsung dispute raises profile of design patent litigation.

Note Morgan Chu mentioned in the article is one of the most highly respected trial lawyers in the US today.

Copyright © 2013 Robert Moll. All rights reserved.

Design Patents in the Modern World - Stanford Law School on April 5-6, 2013

Professor Dennis Crouch reports Stanford Law School will host Design Patents in the Modern World Conference on April 5-6, 2013. See the above link for registration and details for this free conference.

Copyright © 2013 Robert Moll. All rights reserved.

U.S. Design Patents - Protecting Product Appearance

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.