- Posted by Holmes Weinberg, PC
- On May 26, 2017
The case of Apple v. Samsung has the potential to impact the importance businesses place on their design patents. Design patents have been around for over 150 years and in that time have only seen limited usage. Sure, many people or corporations have sued in the past to enforce their design rights with some success, but both the number of design patent lawsuits and the number of design patents granted pale in comparison to those of utility patents.
If asked about protection for the visual aspects of a product’s design, that same person might then dismissively mention the existence of a design patent before relaying a common view about them: they’re easy to get around, but they’re cheap and easy to get. This perspective views design patents, at best, a quick way to get a patent number to slap on a product.
The negative view of design patents is so widespread that even most designers feel that there is no meaningful way to protect the appearance of a product. This feeling exists in spite of the fact that an entire section of IP law in the United States has been carved out for the protection of a product’s visual design. Before we get too technical, patents fall into two major categories- utility and design patents. While methods fit exclusively within the area of utility patents, physical things can find protection on both the utility and design sides.
Essentially, the structure or functional elements of a thing can be protected by utility patents, and the physical appearance can be protected by design patents. If there are any features of a product that both functional as well as part of the visual design, you can often find a way to get protection from both types of patents. This alone is a major advantage of design patents over trademarks and copyrights, which both specifically exclude coverage for anything functional.
While Apple v. Samsung isn’t currently rewriting any design patent laws, it’s certainly putting design patents in a position that makes them hard to ignore. Apple’s focus on its design rights with respect to a product that is also covered by over 200 utility patents (by Apple’s own count) is making people realize that, if you’re serious about design, you need to seriously consider design patents. The key for designers going forward is going to be knowing what it means to be mindful about design patents as being a valuable part of the IP portfolio.
Unfortunately, I can’t simply say that the common, dismissive view of design patents is absolutely false and that filing more design patent applications and suing more people for design patent infringement will fix everything. The fact is that not all design patents are created equal, and that it’s really easy to end up with one that doesn’t protect your rights well. With a innovative thought process and a little extra effort, it is actually possible to get valuable coverage from a design patent.
The problem is that the thinking that design patents are easy to avoid, that they’re cheap and that their only redeeming quality is that they’re easy to get, are really misconceptions about design patents. These false ideas developed from lack of understanding of design itself.
A set of utility claims will include one or more independent claims, which when well-written, will attempt to put the invention, in as broad of terms as possible. Determining how broad claims can be often involves making the claims just narrow enough to exclude any known “prior art,” or other patents or products that existed before the claimed product or method.
A utility patent’s claims can be difficult to understand and are also difficult to write, but they are really the essence of a utility patent. During a patent lawsuit it’s the claims that are argued over and the claims that are ultimately infringed or not by the accused product or process.
The remaining text of the application is a lengthy written description that can refer to a set of technical drawings included with the application. A design patent by contrast has little writing at all. A design patent relies on sets of drawing figures that illustrate the design itself and act as both the description and claims of the patent.
The idea that a design can be partially claimed isn’t new. Almost any patent lawyer Chicago IL will know that features can be shown in a design but excluded from what’s claimed by simply putting those features in dashed lines. A patent examiner won’t tell you if your patent is any good or not. The Patent Office is really just a gatekeeper to make sure your application meets their statutory requirements and that you’re not trying to claim something that has already been patented or that would be obvious in view of other patents, or what’s called “prior art.”
In fact, it often takes years for representatives of companies that produce and sell products covered by design patents to realize that their patents aren’t any good. That usually doesn’t happen until they compare their patents to knock-offs. It’s at that point that they realize their patent left room for the copyist to make minor changes to avoid infringing, or that their patents allowed competitors to pick and choose a few notable characteristics to borrow. It’s important for designers to seriously consider obtaining design patents to protect their work.
Thanks to our friends and contributors from The Law Offices of Konrad Sherinian for their insight into IP and business law practice.