While in pursuit of utility patents, the additional benefit of design patent protection can be overlooked. Distinctly different from utility patents, design patents protect the decorative aspects (the “ornamental design”) of a product, rather than the product’s functional features. While utility patents protect the functionality of the invention (details at our Utility Patent Services page), additional means of protection, one being design patents, may be possible, useful for infringement purposes, and allow for a broader scope in furtherance of protecting your product.
As defined from 35 U.S.C. §171, “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.” In other words, design patents consist of the visual characteristics embodied or applied to an article.
Design patents can provide an inexpensive means to obtain and hold patent protection when compared to utility patents. Design patents face no subject matter eligibility rejections. This can be seen in the Inter Partes Review (IPR) proceeding statistics for design patents. Over the span of 8 years, up to August 2020, only 56 petitions were filed on design patents, of which only 21 (38%) were instituted. When compared to their counterpart in that same time period, 9,400 petitions were filed for utility patents in which 80% of those making it to a Final Written Decision had at least one patent claim invalidated.
One feature of design patents is simple and concise claim language, lowering the risks and hurdles associated with claim construction when drafting and asserting a design patent. In other words, the prosecution of design patents is typically more straightforward, and so are determinations of infringement and validity. Ultimately, the illustrations of the design patent define the scope of the design patent and are more relevant than any description in the claims.
As articulated in Egyption Goddess v. Swisa, the “ordinary observer test” provides the basis for determining infringement of design patents. Egyption Goddess, Inc v. Swisa, Inc. 543 F. 3d 665, Ct. App. (Fed Cir, 2008). The ordinary observer test examines whether the accused article “embod[ies] the patented design or any colorable limitation thereof.” Id. More particularly, infringement is found when the “accused design [is] so similar to the claimed, design that a purchaser familiar with the prior art would be deceived by the similarity between
the claimed and accused designs, inducing him to purchase one supposing it to be the other”. Id. Simply put, infringement occurs when someone buying the accused product who is aware of the prior art believes it to be, or be very similar to, the patented design.
Damages for design patents can also present an advantage over utility patents. There is still the “adequate compensation” approach, as available in utility patents, in which parties determine “no event less than a reasonable royalty.” 35 U.S.C § 284. Inevitably, what constitutes a “reasonable royalty” is a point of disagreement between parties and typically represents a costly approach by requiring competing damages experts’ opinions regarding a “hypothetical negotiation” for a license, or what a willing licensee would have paid a willing licensor in negotiation at the time infringement began.
However, design patents are also entitled to profit disgorgement damages, whereas utility patents are not. In profit disgorgement damages, profits are frequently both easier to calculate and significantly greater than a reasonable royalty. This disgorgement is well defined to be the extent of the infringers total profit attributable to the infringing product, which further serves to simplify the damages analysis and reduce disagreement or ambiguity regarding the amount in controversy and can increase the likelihood of resolving a case through early and less expensive means such as mediation.
Overall, design patents can be used to protect the ornamental aspects of a product. With streamlined prosecution and assertion design patents can be used to strengthen any intellectual property portfolio and allow for a broader scope of protection of a product. Design patents can provide patent protection in an inexpensive manner with the potential for higher damages than their utility counterparts.
To learn more about design patent protection, visit our Design Patent Services page.
If you are interested in more detail related to your situation it is best to speak with an attorney. Request a Free Consultation
Rob is a patent, trademark, and technology associate at Founders Legal. Rob performs patent prosecution, trademarks, and outside general counsel assistance.
Prior to law school, Rob conducted high energy nuclear physics research for Georgia State University and created, coded, and appropriated specialized software for local political campaigns. While in law school, Rob participated in patent prosecution, corporate governance, and trademark law clerking at Founders Legal.
John DeStefano is a patent and technology technical advisor at Founders Legal. John performs patent prosecution assistance for the Intellectual Property practice.
He received his Bachelor’s Degree in Electrical Engineering from Missouri University of Science and Technology and is pursuing a law degree through the University of New Hampshire.