Once upon a time, one of the ways you could separate the unsavory underbelly of the patent industry from the legitimate operators was to look at who was directing clients to get design patents. Design patents have always been easy to obtain…indeed, far easier to obtain than a utility patent. But design patent rights are exceptionally weak. Nevertheless, over the past decade, design patents have continued to grow in numbers, and have proved to be an effective part of patent strategy, in some cases. If you have not considered advising clients to seek design patents, you really should consider the benefits.
Design patents applied for in green, with design patents issued in blue.
As with so many things in life, it is all about knowing what you are getting and having a strategy in place to execute. Design patents can occupy a meaningful place in a patent portfolio, but they are certainly no substitute for utility patent protection.
A protectable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture. In other words, a design patent will protect the way something looks, not the way it functions.
Design patents must really be considered by all inventors because of the backlog at the United States Patent and Trademark Office. It can take 4 or more years, sometimes substantially longer, to obtain a patent. By contrast, a design patent can in many instances be awarded in as few as 6 to 8 months. Some patent is better than no patent, so inventors with a gadget or device should consider seeking design patents as well as utility patents for that reason alone. Furthermore, if you obtain a handful of design patents, you will find that the portfolio together can be quite strong. For example, if you have 10 design patents and 70% are invalid, that still means you have 3 remaining. So the question for the would-be infringer is this: which 3 do I need to avoid? Still further, many times design patents, even though weak, will be enough to scare away competitors, particularly if your competitors are small operators. So even though weaker rights are granted, those rights can be enough, or at least play a meaningful role in a broader patent strategy.
It is also undeniably true that design patents have grown in strength over the last several years, thanks to a 2008 decision by the United States Court of Appeals for the Federal Circuit in Egyptian Goddess v. Swisa. In this case, the Federal Circuit significantly changed the design patent infringement test, choosing to adopt what is known as the “ordinary observer” test. This new test makes design patents more valuable because it will be easier to prove infringement.
Of course, design patents are still susceptible to challenge as being invalid, and they still do not protect functionality, so having one is nice but having more than one is even nicer! Even nicer is having a handful of design patents that you can obtain relatively quickly and pending utility patent applications where you try and protect the functionality beneath the surface. Utility patents and design patents can make an excellent team within a patent portfolio.
Tags: design patent, design patent application, design patents, patent, patents
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