The Hidden Power of Design Patents and How Patent Owners Can Enforce Them to Make Money

Design patents can be immensely potent asset to your patent portfolio. For instance, design patents protect virtually everything with an ornamental aspect – from the shape and design of your smart phone to 3D printing. Design patents also deal with billions of dollars. Don’t believe it? Just ask companies like Apple and Samsung. Majority of the patent disputes between two corporations relate 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.

Yes, billions of dollars and design patents. So, now do I have your attention? Well then, let me show you the money!

So What Is The Difference Between A Utility And A 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 and statistics prove it. For instance, in 2018, measly 45,625 design patent applications were filed with the U.S. Patent Office compared to 551,516 utility patent applications.[1][2] In fact, this disparity between the two has been blatant at least in the United States since 1963.

Utility patents, as their name suggests, allow inventors/applicants to protect the utility or “useful” aspects of their inventions. In order to be considered a utility protection, the inventions must be novel, non-obvious and incorporate some form of functionality. Utility patents also provide a 20-year exclusive protection term from the earliest date of filing, if granted.

Design patents, on the other hand, do not focus on utility. Instead, they tend to protect ornamental features of the invention, namely, the visual characteristics or the “look and feel” of the invention. The invention attempting to secure a design patent must contain novel and non-obvious ornamental features that are non-functional in nature. Design patents also receive a shorter protection 14-term from the date of grant compared to utility patents.

The lower rate of filings and lesser protection term seems to be just as potent when it comes to exclusive protection. 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).

Do 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. It may not be surprising, therefore, that two of the leading design patentees, Samsung and Apple are aggressively litigating in courts all over the world for billions of dollars over design features of their gadgets.

Are There Monetary Damages In Design Patents?

Damages resulting from design patent infringements are recoverable under 35 U.S.C. §284 or under 35 U.S.C. §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 §284 statute. However, here is the key distinction. Unlike the utility patent owner, the owner of a design patent can also seek remedy under §289 – the infringer’s total net profits from the sale of the article containing the infringing design, and at least $250 at the minimum.

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.

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 §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, that is…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. Yes, the close relative of patents — copyrights. 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 design patent owners do not have to prove that infringer was aware of the original work and intentionally 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. That’s it!

Furthermore, copyright protection can be obtained only for limited works defined by the statute, while there is no limitation to the number of items for which a design patent can be obtained.

Conclusion

In conclusion, design patents are cost effective and provide more alternatives in damages compared to utility patents. They are more comprehensive in their protection than copyrights and can be relatively less cumbersome to prove in a court of law when infringed upon. Design patents can also be quickly obtained, with majority of them granted within one year from the date of filing with the United States Patent and Trademark Office. To summarize, design patents play a significant role in protecting innovations and can prove to be a valuable asset to own. Just ask the multi-billion dollar companies like Apple and Samsung. 


[1] Statista.com, Number of Design Patent Application Filings in the US, found at https://www.statista.com/statistics/256576/number-of-design-patent-application-filings-in-the-us/

[2] World Intellectual Property Organization, World Intellectual Property Indicators: Filings for Patents, Trademarks, Industrial Designs Reach Record Heights in 2018; found at https://www.wipo.int/pressroom/en/articles/2019/article_0012.html

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