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You Secured a Utility Patent; Now What about Your Design Patent?

Many manufacturers forget that design patents can protect their inventions and increase the value of their intellectual property portfolio. Design patents offer a different type of protection vs. a utility patent. Understanding the differences between design and utility patents may be helpful in making the correct decision on what type of intellectual protection is appropriate.

In a nutshell, utility patents protect the way that a device works or is made. Design patents protect the design of an article of manufacture, including how the device looks.

A great example of the power of design patents has been demonstrated between Apple and Samsung in various courts around the world over the past two years. Their epic battle in the U.S. has been a hot topic in the design patent world, because litigation between these two fierce competitors is focused upon four design patents held by Apple. These design patents covered many of the iPhone’s critical visual features, such as the home button, rounder corners and tapered edges of the case and the on-screen icons.

Design patents protect only the appearance of an invention. Thus, design patents do not include a written description of what the structure of the device is or how it is made or used. Rather, the design patent usually contains a series of drawings or figures depicting the look of the design with descriptions of each of the views shown in particular figures. For this reason, the cost to prepare a design patent application will run from $2,000 to $3,500, much less than a utility patent application, which can be several times that amount.

One can only have a design patent issued if the device is new, original and ornamental in its look. A design patent is easily identifiable by its unique number designation: a “US” followed by a “D” and a six digit number; for example, US D007, 007. An additional nuisance of design patents is that the term of a design patent is shorter than a utility patent, expiring 14 years after the date of issue. Further, if keeping your invention a secret is critical, then you will be happy to know that design patent applications remain confidential and unavailable to the public until the design patent actually issues.

As noted above, a design patent application includes only one claim, referring specifically to the drawings within the application. Therefore, drawings are mandatory for the application to be accepted by the U.S. Patent and Trademark Office (USPTO) and must define the metes and bounds of the single claim as shown in the various views of the drawings. Depending upon how the drawings are configured, an application may cover only a portion of a device. For example, the design patent is for a shovel; however, the patentee only wants to claim the handle, as opposed to the entire shovel including the handle. The patentee in this case would feature the handle in solid lines and the rest of the shovel would be shown in broken rather than solid lines. When deciding how to create the drawings of your invention, careful consideration should be taken to identify the critical ornamental parts of the device and which aspects of the device you want to protect in the patent application.

Like utility patents, design patents may be infringed by someone who, without authority, makes, uses, offers to sell or sells the claimed invention within the U.S. or who imports or exports the invention from or to the U.S. Infringement also occurs when someone actively induces the infringement of a patent or contributes to the infringement of a patent. Standards for infringement are equally applicable to both design and utility patents, with the exception of remedies for infringement of certain process patents. For both types of patents, the first step of having a court determine the meaning of the claim is the same. This procedure is typically referred to as “claim construction.” In construing a design patent claim, the court will describe the design in words and identify functional versus non-functional features. Importantly, only non-functional features will comprise the claimed design. The next step in determining whether the design patent is infringed is to compare the constructed claims with the accused design.

This is accomplished by comparing the patented and accused designs for their overall visual similarity in accordance with the “ordinary observer test” to determine if the designs are substantially the same. Designs are substantially the same if the resemblance is such as to deceive an ordinary observer, inducing him to purchase one supposing it to be the other. Differences and similarities are relevant in determining whether an ordinary observer would be deceived into purchasing one design supposing it to be the other.

Thus, a plaintiff must be able to prove that the accused design is substantially the same as the claimed patented design in order to show infringement.

An example of a design patent claim and description is set forth in Exhibit 1. This claim is taken from U.S. Design Patent No. D628, 291, which is directed to the Ornamental Design for a Surgical Retractor.

Exhibit 1: Example of a Design Patent Claim and Description

Boger Exhibit1


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