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Why design patents deserve another look

published in McAfee & Taft tIPsheet | November 10, 2015

Why design patents deserve another look

By Chase C. Webb

Most companies have typically used utility patents as the primary means of protecting their products, devoting comparatively little effort to pursuing design patents. However, a recent holding out of the Federal Circuit may increase the attention given to design patents. In Apple, Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015), the Federal Circuit upheld an award of damages in excess of $500 million based on the infringement of Apple’s intellectual property, including its design patents. That holding demonstrates that design patents may be more valuable than once thought.

A design patent provides protection for the visual aspects of a particular product, as opposed to a utility patent which provides protection for the functional features of a product. Due to their simplicity, design patents generally cost significantly less to prepare and file than utility patents. Design patents also traditionally have a shorter prosecution period in the U.S. Patent and Trademark Office than utility patents. Additionally, unlike other types of patent protection, design patents do not require maintenance fees to keep them in force.

Design patents also provide an effective form of immediate protection. Unlike trade dress protection, which usually requires the owner to establish an association in consumers’ minds between the visual aspects of a product and its source, the holder of a design patent is not required to establish such an association before proceeding against an infringer. Thus, design patents allow the patent holder to deter counterfeit products and enforce its rights against counterfeiters before trade dress protection accrues. The holder of a design patent can bring suit immediately against an infringer, even if there is no consumer recognition of the protected design, and can recover the total profits obtained by an infringing party.

Nevertheless, because design patents are directed to the visual aspects of a particular product, they tend to be narrow in scope. Also, the visual aspects of many products are not important. That being said, the judgment affirmed by the Federal Circuit in Apple Inc. v. Samsung Electronics Co., Ltd. has confirmed that there are financial and strategic benefits to maintaining an intellectual property portfolio that includes design patents, in addition to utility patents, when appropriate. Thus, companies should evaluate their product lines to determine whether they would benefit from this underutilized means of protection.