Successful by Design: Understanding the Role of the Design Patent in an IP Portfolio

The design patent -- the lesser-known and more modest cousin of the utility patent -- is quick, easy and inexpensive to obtain. And recent developments in case law are enhancing its value.

“Design is art that makes itself useful.”

— Translation from 1984 poster for Die Neue Sammlung, Design Museum, Munich

The design patent — the lesser-known and
more modest cousin of the utility patent —
is quick, easy and inexpensive to obtain.
And recent developments in case law are
enhancing its value.

Companies understandably look for the most
“bang for their buck” when it comes to
obtaining intellectual property (IP) protection.
Historically, design patents have often been
viewed as the “Seward’s Folly” of the IP world —
cheap and easy to obtain, but of dubious
value. Since the first design
patent was issued to George
Bruce for a typeface in 1842,
only about 600,000 design
patents have been granted in
the U.S., compared with more than
7.5 million utility patents. However, recent
changes in the case law of design patents now
give companies more protection over the look,
styling and visual appeal of new products, which
in turn gives design patents greater value.
Available for a new, original and ornamental design
for an article of manufacture, a design patent protects how an item looks regardless
of how it functions. It can protect an item’s
shape as well as surface decoration. However,
to be eligible for patent protection, the
design cannot be “obvious.”

Utility patents protect the way an item is
used or works, without regard for how the
item looks. Unlike design patents, inventions
afforded utility patents need to be “useful.”
They offer broader coverage than a design
patent because they protect the invention
defined by the patent claims, plus “equivalents”
— that is, “insubstantial alterations that
were not captured in drafting the original
patent claim, but which could be created
through trivial changes.”

Therefore, the protection provided by a
utility patent is not necessarily limited to
what is described in the patent itself. Design
patents, on the other hand, have only one
“claim,” or protected element, and protection
essentially extends to the design shown in
the patent’s drawings.

Having said that, while there is a widely held
misconception that design patent coverage
is strictly limited to exact copies of the design
shown in the drawings, such coverage is, in
fact, a little broader. In the 2008 Egyptian
Goddess v. Swisa
case, the Federal Circuit ruled
that so long as two designs are “substantially
similar” in overall appearance to an ordinary
observer in light of the subject designs and
the prior art, minor differences are irrelevant.

Key Differences Between Design and Utility Patents

There are differences in the procedures for
obtaining utility and design patents. A utility patent applicant can file a
“provisional” patent application,
which provides a one-year “bookmark”
within which to file a formal application
and receive a retroactive filing date. This
procedure is not available for design patents.
Further, certain prosecution techniques, such
as continuations-in-part and claim amendments,
are not available for design patents.

Utility patents have a 20-year term, while a
design patent term is 14 years. Also, applications for
utility patents are typically published promptly after
the expiration of 18 months from the earliest filing
date from which benefit is sought, but only issued
design patents move to publication.

Many companies prosecuting utility patents
are finding that their patent prosecution costs are
growing exponentially, while the likelihood
of actually obtaining a utility patent is diminishing.
What’s more, utility patents tend to be
much more expensive to prosecute because
they have a higher rejection rate and a lower
allowance rate, and generally take longer to
obtain. It is estimated that in the late 1990s,
the allowance rate for utility patent applications
reached a peak of around 72 percent. By the
end of 2008, the allowance rate had dropped
to approximately 44 percent.

As a rule, the U.S. Patent and Trademark Office
(USPTO) strives to issue utility patents within three
years from application, but design patents usually
issue within just 15 months, and about half issue
within a year. Further increasing their expense,
utility patents also require the payment of a hefty
maintenance fee at 3.5, 7.5 and 11.5 years from
issuance. Design patents require no such fee.

Key Advantages and Disadvantages

of Design Patents

On the plus side, design patents are cheap, quick
and simple. One can use a “patent pending” designation
immediately after filing, which can act as a
marketing tool and deterrent, although the designation
provides no actual protection until the patent
issues. Further, one can quickly obtain a design
patent to coincide with a product rollout, whereas
a utility patent might not issue until years after
the useful life of the product has expired.

With the ruling in Egyptian Goddess, it is now
easier to establish infringement. Since the Federal
Circuit adopted a modified “ordinary observer”
test as the sole test for design patent infringement,
design patents have sharper claws because
infringement is more easily proven. Thus, the value
of a design patent has increased as a result of the
Egyptian Goddess ruling.

The Egyptian Goddess holding led to the
Federal Circuit’s subsequent decision in
International Seaway v. Walgreens. Recognizing
the symmetry between the law of infringement
and the law of anticipation (meaning a patent is
invalid because someone else created the invention
first), the court concluded that a design under
the new “ordinary observer” standard is anticipated
(and therefore invalid) if a product incorporating
that design was in existence prior to the filing
of the patent application. This decision makes design
patents somewhat more difficult to acquire
and thus even more valuable once obtained.

Design patents are presumed to be valid, and
an infringer has to overcome a heavy burden to
invalidate the patent. Injunctions are also relatively
easy to obtain because no technical expertise
is needed, and a judge can decide whether the
accused design is substantially the same in overall
appearance. This chance for immediate relief
makes the design patent an important
addition to a product’s IP portfolio.

Design patents are relatively inexpensive.
They require USPTO filing fees of $220, search fees
of $100, examination fees of $140, and an issue
fee of up to $860, but no maintenance fees after
issuance. Plus, legal fees are significantly lower
than for a utility patent.

What are the disadvantages of design
patents? Design patents historically have been
difficult to enforce (although the “ordinary
observer” standard has helped on this front) and
generally have less scope than a utility patent.
Further, design patents protect only one design
at a time, although one can file multiple
applications to protect multiple, nonobvious
variations of a single design.

Design Patents vs. Other Protections

There are subtle, but important, distinctions
between design patents and other forms of intellectual
property protection. Here is a brief guide
to some of the alternative ways of protecting a
company’s intellectual property:

  • copyright protection is available only
    for certain categories of works defined by statute,
    while there is virtually no limit to the number
    of items for which one can obtain a design patent.
    Infringing a copyright, like a design patent,
    requires substantial similarity between the
    accused and the protected design/work.
    In copyright, independent creation is a defense
    to infringement, but it is not a defense in
    design patent infringement.

While both design patents and copyrights cover
aesthetic features of articles, copyrights generally
cover nonutilitarian articles like paintings and
sculptures — that is, articles that exist only for
their looks and not for their usefulness.
Copyrights can, like design patents, also extend
to utilitarian articles, but only to the extent the
aesthetic features of the article can exist independently
from the article, like a sculptural lamp base.
Design patents are obtained only through formal
registration, and applications must be filed within
one year of the first offer for sale, public disclosure,
or public use of a product embodying the design.
In contrast, there is no one-year-on-sale bar
for copyright registration, and no requirement
to formally register for protection, although it
confers significant benefits.

  • trademark protection prohibits competitors
    from using confusingly similar source-identifying marks (words, colors, smells, sounds and logos)
    and protects consumers from confusion as to
    the source of goods and services. A design
    can also serve as a trademark, as in the case
    of a uniquely shaped bottle.

  • trade dress protection is available
    for the shape of a product or container serving as
    a source indicator. The trade dress must not serve
    a utilitarian function, and must be “distinctive” —
    that is, it must identify the source of the product.

Though the same product shape may be
protected by both a design patent and trademark/
trade dress, the qualifications for such protections,
and the protections themselves, are quite
different. Design patents prohibit a third
party from making, selling, offering to sell or
using any item having the protected design.
To infringe a trademark or trade dress, an
infringing item (or mark) must be likely to
cause confusion to the consuming public.
This analysis takes into account the similarity
of items actually sold, as well as other factors,
such as which consumers buy the products, the
cost of the products and the channels of trade.
Trademark/trade dress protection also is
available without formal registration.

It is possible to obtain overlapping coverage from copyrights, trademarks/trade dress and
design patents on the same product. An example
of overlapping coverage can be seen in
the Google, Inc. design patent drawing. {photo1-left}
Google has obtained a
copyright on the screen
shot (designated by the
© symbol) and is using
one or more elements
as a trademark (as seen
from the ™ symbol).
Notice that the word
“GOOGLE” is written in
dashed (ghost) lines.
This means that the
word is not an “essential”
feature of the
design. Thus, even if a
would-be infringer substitutes its own company
name in a similar layout, it would infringe the
design patent and the copyright. Also, logos
and shapes may serve as a trademark because
they identify the source of goods, and the
creative/design aspects may be protected
by copyright or design patent.

Design patents, copyrights and trademarks/
trade dress all require different elements to prove
unlawful copying or imitation. Just as a criminal
may be charged with multiple
crimes for the same deed,
companies may allege multiple
types of infringement for
the same act.

Design patents historically
have been overshadowed by
utility patents and other forms
of IP protection. However, with
recent changes in the case law
and with careful selection and
planning, design patents can
provide inexpensive yet valuable

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