When most people think of patents, they think of what is technically known as a “utility patent.” This is the protection granted to inventions. But there is another form of patent that is granted exclusively to protect the original ornamentation of industrial designs. These “design patents” protect the appearance of the non-functional aspects of a design. In some respects, it is similar to a copyright—and there is some overlap between the two intellectual property protections—but the biggest difference is that the owner of a design patent does not have to prove an infringing article was knowingly copied from the original design.
Because design patents are increasing in popularity, any business that manufactures or sells physical products needs to have a basic understanding of design patent law. Fortunately, the claims of a design patent are much easier to understand than the claims of the more traditional utility patent. The claims in a design patent are literally set out in pictures. A typical design patent will contain a series of pictures drawn from different angles (top view, front, side, perspective, etc.).
Whether an article infringes the design is simply a question of whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was substantially the same as the patented design.[i] While this simple test seems to provide an incredibly wide scope of protection, the devil is always in the details. The term “prior art,” means all the similar or related designs for a particular item that have ever been publically known. Thus, when comparing the similarity of the patented design of a car’s bumper with an accused infringing bumper, the similarities of the bumper designs will be judged against the backdrop of all the automobile bumpers that have come before. This is why courts have held that design patents have almost no scope.[ii] The more common the object, the more the design must distinguish itself from what came before it to encompass anything more than exact copies. This distinction is of pinnacle importance to an accused infringer in an industry such as sporting equipment manufacturing where there is great number of existing ornamental designs for products like footwear, skateboards, water-skis, etc. On the other hand, industries such as aftermarket auto body part manufacturers, who by their nature must produce copies of original parts, can run into real problems.
To illustrate just how popular design patents are becoming, it is instructive to look at the statistics published by the USPTO. In 1993 there were only 10,630 design patents granted by the USPTO.[iii] By 2003 this number had increased to 16,574, and by 2013 was up to 23,468 (although this was down from the 2008 peak of 25,565).[iv] The increasing interest in design patents is illustrated by companies like Samsung Electronics and Apple. In 2003, the total number of design patents granted to Samsung was just 93.[v] By 2013 the total has ballooned to 3901.[vi] Up until 2008, Apple had never received more than 64 design patents in a given year. But from 2009 to 2013, it averaged almost 140 each year.[vii]
Those two companies are notable because many commentators have linked the recent explosion in design patent application to the high profile worldwide litigation between these two rivals.[viii] Although eventually reduced, at one time Apple had been awarded over $1 Billion in damages against Samsung for infringement of its iPhone design patents.[ix] This massive award reflects another peculiarity of design patent law—a successful design patent litigant can claim the entire profits of the infringing article as damages.
Brian Casper is an attorney with Cantey Hanger, LLP and focuses his practice on intellectual property litigation. If your business has any concerns about design patents of any other intellectual property matters, feel free to call him directly at (214) 978-4132.
[i] Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc).
[ii] In re Mann, 861 F .2d 1581, 1582 (Fed. Cir. 1988).
[ix] See id.
[x] 35 U.S.C. § 289.