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Electronic Design
Eric Amundsen, Jason Honeyman, and Andrea Merin
Tue, 2016-12-27 14:24
In this term, in the U.S. Supreme Court, Apple and Samsung argued a case that
brings to the forefront a lesser-known type of intellectual-property (IP) protection:
design patents. While most companies are well-versed in the value of utility patents,
many have yet to discover that design patents can be an equally important
component of their IP portfolio. Design patents can help prevent knockoffs, obtain
faster patent protection, save money, and more.
The most popular type of patent, a utility patent, protects
the structural and functional aspects of a new or improved
product or system. A design patent, on the other hand, covers the unique appearance
of an item. A design patent includes elements such as a specific product shape, color
arrangement, or surface ornamentation. For example, the
shape of a sports car or a surgical instrument may be
protected with a design patent, and likewise a smartphone
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2. case with a new surface pattern (see figure).
Other important differences exist between design and utility patents. A design patent
itself consists primarily of drawings with little text other than brief descriptions of
each drawing orientation and explanations of the drawing conventions used. A utility
patent, on the other hand, routinely includes many columns of text that describe the various embodiments of an
invention, and ends with one or more claims that define the scope of the invention. A design patent has only one
claim—a short characterization of the illustrated device, such as “the ornamental design for a medical device as
shown and described”—and like a utility patent, may be directed at only a part or subassembly, rather than the
device as a whole.
Related
Misunderstanding Plagues the Patent System
Standard-Essential Patents: Innovation’s Boon Or Bane?
The Apple/Samsung Judgment And Our Broken Patent System
A design patent is in force for 15 years from the date it issues as a patent, whereas a utility patent has a term of
20 years (with some exceptions) as measured from the filing date.Once a design patent is issued, no further
action is required to keep it in force. In contrast, to keep a utility patent in force, maintenance fees must be paid
on three separate occasions to the U.S. Patent and Trademark Office (USPTO). These fees are due four years,
eight years, and 12 years after the issue date. Failure to pay any of the maintenance fees will cause the utility
patent to lapse.
Utility and design patents can play an enormous role in your company’s success, so it might be worthwhile from
a strategic standpoint to diversify your IP investment with design protection. Consider the following reasons to
pursue design patents.
Protecting Your Investment
A product’s design can critically impact market acceptance and success. For example, Apple has argued in court
that the iPhone’s success is due not only to its technical features, but—at least in part—to its appearance. And in
the Apple v. Samsung case, the damages awarded for design-patent infringement were hundreds of millions of
dollars more than awarded for utility-patent infringement.
When it comes to patents, a product may include
innovative technical features that are covered by a utility
patent, but the look and feel of the product may warrant
design-patent protection. In some cases, such as when
the technical features are outdated, utility protection
may not be available. However, if you recast an old
product in a new design, it may be possible to protect the
new design with a design patent. For example,
headphones have been around for years, but if even just
a portion of the headphones is redesigned, it may be
possible to protect them with a design patent.
Preventing Knockoffs
A competitor or knockoff artist may want to sell an item
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3. at looks just like your company’s product, taking
advantage of the technology, customer service, or
branding that distinguishes your product in the
marketplace. Particularly for over-the-counter
consumable products, a customer may not take the time
to discern the genuine product from an imitator’s
product. If the similar product doesn’t incorporate a
technical innovation covered by one of your company’s
utility patents, then there may be no utility-patent
infringement. However, there may be design-patent
infringement.
Getting Protected Faster
Design patents tend to be issued more quickly than
utility patents. While it’s common to wait two years or
more before the USPTO reviews your utility application, design-patent application examination timelines are
typically shorter, with design patents generally receiving a first review within just over a year. In fact, some
patents are even issued within a year. As such, filing a design patent may be beneficial if you have a product
quickly entering the marketplace.
Cost Savings
A design-patent application typically costs much less to prepare and prosecute at the USPTO than a utility
application. For a design application, an attorney decides what figures to prepare, and an illustrator, known as a
patent draftsperson, prepares the figures. Minimal time is required from the attorney to prepare the text of the
design application. In contrast, a utility application generally requires substantial amounts of text and claims
drafting, and therefore requires more time and expense to prepare.
Once design and utility applications are filed at the USPTO, examiners will review the applications. Frequently,
an examiner grants the design patent after the first review of the application, whereas utility applications are
typically reviewed by the examiner several times before reaching a favorable outcome.
Quicker Settlements
Remedies for design-patent infringement are stronger than those offered for utility-patent infringement. For
example, a prevailing design-patent plaintiff can recover all of an infringer’s profits for selling the offending
design. A utility-patent owner, in contrast, typically recovers only a reasonable royalty for infringement or, in
certain circumstances, its own lost profits. A utility-patent owner isn’t permitted to recover the profits of the
infringer. As a result, in instances of an alleged design-patent infringement, the threat of losing all profits may
motivate the infringer to seek a quick settlement.
Advantages Over Trade Dress
Some may wonder whether design-patent protection is overkill if a company intends to rely on trade-dress
rights, a form of IP similar to trademarks that also protects the look and feel of a product or its packaging. To
recover for trade-dress infringement of a product’s design, however, one must first establish that the trade dress
has obtained “secondary meaning” or “acquired distinctiveness” in the marketplace. In other words, one must
show that the public has come to associate the product design’s trade dress with a particular producer of the
goods.
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4. hough trade-dress protection is valuable, it typically takes at least several years and considerable advertising
and marketing expenditures before the requisite secondary meaning or acquired distinctiveness can be
established. Consequently, during at least the first few years after a product launch, if not longer, no trade-dress
rights are available to stop copycat products. On the other hand, a design patent is typically granted long before
this evidentiary hurdle can be met, enabling the design-patent owner to deal immediately with infringers.
Utility patents will always be a valuable component of a company’s intellectual-property strategy. However, for
reasons detailed in this article, it’s essential that companies also consider design patents to protect the unique
design elements that distinguish their product from their competitors’ products. A combined strategy of filing
for both utility and design patents will protect not only the functional aspects of a product, but its unique
appearance as well.
Eric Amundsen and Jason Honeyman are shareholders and Andrea Merin is an associate in the Mechanical
Technologies Practice at Wolf Greenfield, an intellectual property law firm in Boston. They can be reached at
eamundsen@wolfgreenfield.com, jhoneyman@wolfgreenfield.com, and amerin@wolfgreenfield.com,
respectively.
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