Successful by Design

Understanding the Role of the Design Patent in an IP Portfolio

“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.

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 protection.