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Written By: Lawrence A. Maxham

Design patents are growing strength in the US. Over the years design patents had been relegated to also-ran, or poor cousin status, in relation to utility patents. However, results in court over the last couple of decades would belie that status.

A great example of this trend toward the value of design patents is Apple’s major win over Samsung which was, in large part, due to Apple’s design patent portfolio. Nine years ago Apple won about $1 Billion in the federal district court in San Francisco. After several opinions by higher courts, even one by the United States Supreme Court, and additional trials, the final result was about $539 Million for Apple, of which $534 Million was for design patent infringement and $5 Million was for utility patent infringement.

Another example is the automobile industry which is big into filing for design patents which has proved to be a valuable investment for them. Cases like Auto. Body Parts Ass’n v. Ford Global Techns., LLC., of 2019, show the growing strength of design patents in protecting IP. Ford had design patents on various aspects of vehicles, including hood and headlamp shapes. When the ABPA sued to negate Ford’s design patents so they could freely provide replacement parts, both the federal district court and the court of appeals found in favor of Ford and upheld the validity of their design patents.

It should not be inferred that only large multinationals can make use of design patents. They are for everyone, especially given the fact that obtaining a utility patent may cost five-to-ten times as much to get issued. And design patterns have a life of 15 years from issuance and are not subject to maintenance fees.  Further, design patents typically are issued within one year from filing, compared with two to three years for a utility patent.

What is potentially design patentable? A design patent is addressed to the ornamental appearance of an article of manufacture and not to its functionality or structure. However, an apparatus may be covered by both a utility patent and a design patent. They cover different aspects of the invention.

When seeking to enforce a design patent against an infringer, there are two legal factors in the design patentee’s favor.  One is that infringement is relatively easy to prove because courts apply an “ordinary observer” test, not something more technical or convoluted. Another plus factor is that it is possible to obtain a temporary restraining order (TRO),  which is not currently possible with a utility patent. This can be very valuable to stop copycats at trade shows, for example.

If a company has a line of related products, or updates the way products look on a somewhat regular basis, a series of design patents may be a way to erect barriers to competition for relatively low investments.

If you have questions about your invention, design or otherwise, please call us at 760-975-3843 or e-mail us today and we’ll be happy to set up a consultation with you to discuss your next steps. We are available for virtual and in-person meetings.


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