Design patents can be potent asset in your intellectual property portfolio. They protect virtually everything with an ornamental aspect – from the shape and design of your smart phone to 3D printing. Don’t believe it? Just ask Apple and Samsung. Majority of their patent disputes to date relates to design patents. In fact, by mid-2012, the two companies were embroiled in more than 50 lawsuits around the globe, with billions of dollars in damages claimed between them. Yes, ladies and gentlemen – Billions of dollars and design patents. So, do I now have your attention? Show me the money!
What’s the difference between utility and design patent?
When most people ponder about protecting their invention, they invariably think of utility patents. Utility patents have always been the proverbial big brother to design patents. For instance, in 2014, measly 35,378 design patent applications were filed with the U.S. Patent Office compared to a staggering 578,802 utility patent applications. In fact, this disparity between the two has been blatant since 1963.
Utility patents, as their name suggests, allow inventors to protect the utility or “useful” aspects of their inventions, provided that they are novel and non-obvious. Utility patents also provide the patent owner with a 20-year protection term from the earliest date of filing.
Design patents, on the other hand, do not focus on utility aspects. If granted, they protect the ornamental features of the invention, namely, the visual characteristics or the “look and feel” of the invention, provided that the features are novel and non-obvious. Design patents also receive a shorter protection 14-term compared to utility patents.
As one court famously noted,
"[a]lthough the design patent is not as popularly known as its counterparts, the utility patent and the copyright, design patents perform a distinct function in the federal scheme of legal protection for creative works.” (See Schnadig, 620 F.2d at 1167).
What corporations have the biggest portfolios of design patents?
Most corporations that own design patents also sell products that are functionally distinguishable from their competitors. As the U.S. Patent Office reports, the following are some of the famously known multi-national companies that own majority of the design patents since 1990: Samsung (4,733), Sony (3,170), Nike (3,062), Microsoft (2,674), Proctor and Gamble (2,252), LG Electronics (1,985), Honda Motor Co. (1,592), Motorola (1,347), Kohler (1,284) Apple (1,267), etc. Therefore, it may not be surprising that two of the leading design patent owners in Samsung and Apple are duking it out in courts all over the world over design features of their smart phones.
So where is the money?
Damages resulting from design patent infringements are recoverable under §284 or under §289. In fact, design patent and utility patent holders can seek royalties or the patent holder’s lost profits resulting from the alleged infringement under the §284 statute. However, here is the key distinction. Unlike the utility patent owner, the owner of a design patent can also seek remedy under 35 U.S.C. §289 – the infringer’s total net profits from the sale of the article containing the infringing design, and no less than $250. Specifically, §289 states:
Whoever during the term of a patent for a design, without license of the owner,
- applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or
- 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.
But, wait, here is the caveat, and its big. Real big. While the design patent owner cannot recover both damages under § 284 and the profits of the infringer under §289, the additional remedy under §289 can be significant. This is because to prove lost profits, the design patent owner, under 35 U.S.C. §289 does NOT have to prove profits due to infringement strictly related to the ornamental features of the product. Instead, the design patent owner can potentially retrieve all profits garnered due to infringement of the product containing the design. Yes, cha-ching!
What about copyrights? So then why design patents?
While in some countries it is necessary to select either design patent or copyright protection, United States allows a person or corporation to obtain both a design patent and copyright protection. In fact, a person’s copyrights are enforceable right at the moment the work is created. Design patents, on the other hand, are not obtained automatically, but require filing to and grant by the Patent Office. However, design patents offer much broader protection than copyrights. This is because the design patent owner does not have to prove that infringer was aware of the original work and copied it. The patent owner only has to show that the protected design and the ornamental features of the product have the same look and feel. Furthermore, copyright protection can be obtained for certain works defined by statute, while there is no limitation to the number of items for which a design patent can be obtained.
In conclusion, design patents are cheaper and faster compared to utility patents. They are more comprehensive than copyrights and can be relatively less cumbersome to prove in a court of law when infringed. Design patents can also be quickly obtained, with majority of them granted within one year from the filing date. Indeed, design patents play a significant role in protecting innovations and can prove to be a valuable asset to own. Just ask Apple and Samsung.