Design patents are important intellectual property tools in the right circumstances. Design patents cover the “ornamental visual appearance” of an “article of manufacture” (i.e., a manufactured article). Stated differently, a design patent covers the outward appearance or “look” of a manufactured article, not its function. Though not as well-known as utility patents, design patents can provide meaningful patent protection for a vast array of manufactured articles, including fashion patterns on textiles, mobile phone body designs, clamshell and other packaging designs, car body designs, toy designs, silverware, hand tools, individual component designs of larger manufactured articles, and much more. A design patent can cover a shape of the article, surface features and ornamentation, exterior materials, and/or other features in the outward appearance of the article. An example is the well-known Apple iPhone set forth below [
design patent No. D558756]:
The protection provided by a design patent is somewhat limited, as it covers only the outward appearance of the manufactured article, rather than its function as provided by a utility patent. Design patent protection prevents knock-offs and close approximations of a product’s outward appearance. Despite the specificity of the design patent coverage, the scope of protection provided by a design patent can have breadth to cover variations in the design, if the patent application is prepared and drafted strategically.
Design patents can also complement utility patent protection and trade dress protection. For example, a new design for a tool may provide new functionality worthy of a utility patent, and the version sold to consumers may also have design elements (e.g., a handle design) that are protectable through a design patent. Also, the same design elements may be protected by design patent and trade dress protection (which is a version of trademark protection) if they are not functional.
A design patent can be acquired relatively quickly for a novel and non-obvious design, whereas trade dress requires that that the design acquire distinctiveness over many years that associates the design with the manufacturer of the design in the mind of the consumer. Acquiring distinctiveness in trade dress can take significantly longer than acquiring a design patent. Additionally, design patents carry strong remedies for infringement that have fewer defenses and are distinct from those for trade dress infringement. Design patent infringement remedies, and other considerations relevant to design patents are discussed in more detail here.
The general test for whether a design is patentable is nominally the same test applied to utility patents: the design must be both novel and non-obvious in view of the relevant prior art. The novelty test is relatively straight forward and requires that the design was not previously made public by a third party through sales of the design, patenting the design, or through other means. Non-obviousness in the design patent context is stated as follows: whether it would have been obvious to a person having ordinary skill in the relevant art to have “combined teachings of the prior art to create the same overall visual appearance as the claimed design.” This test comes from the case of
Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) as stated by the US Court of Appeals for the Federal Circuit, which is the appellate court that generally hears all patent appeals. Every applicant for a design patent must overcome this test. As a practical matter, obviousness rejections in design patent applications are not frequent, but they do occur. For instance, where a design is used in one context and then copied for use in another context, the new application of the design may be considered obvious in view of the earlier application of the design. In
Neo-Art, Inc. v. Hawkeye Distilled Products, Co. ,654 F. Supp. 90 (C.D. Cal. 1987), the court found that an alcohol container made to look like an intravenous fluid dispenser was obvious because there were pre-existing intravenous fluid dispensers with closely similar appearances. So, unless there is a pre-existing design that is closely similar to the applied-for design, like the example in the Hawkeye case above, an obviousness rejection of the applied-for design patent application will be unlikely.
A design patent is infringed if an accused design violates the “ordinary observer test”. Generally, the ordinary observer test is met if an ordinary observer would confuse an infringer’s design with the patented design, and the patented design’s novel elements are found in the infringing design. In other words, the infringing design must resemble the patented design closely enough that the ordinary observer would believe they are the same design, but the similarities cannot be based on pre-existing or run-of-the-mill designs. The ordinary observer test has developed over time, beginning with a Supreme Court decision in 1871, which held:
A relatively recent decision by the U.S. Court of Appeals of the Federal Circuit in the case of
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) has clarified what is required for the above test. According to the
Egyptian Goddess case, there are two steps to the inquiry. The first step is a determination of whether the accused design and the patented design are plainly dissimilar.
Egyptian Goddess, 543 F.3d at 678. If the two designs are dissimilar, the inquiry ends, and there is no infringement. However, if the two designs are not plainly dissimilar, then a second inquiry is made which involves comparing both “the claimed and accused designs with the prior art.” Id. This inquiry seeks to determine which features of the claimed design are different from those that existed in earlier public designs (known as “prior art”), and whether those different (i.e., “new”) features are present in the accused design. Thus, the first question is whether the accused design and the patented design are plainly dissimilar; and if they are not, whether the features of the patented design that are not found in the prior art are also found in the accused design.
If the confusion results from aspects of the design that were present in the prior art, there is no infringement. For example, if a person patents a new design for a lamp that has a novel body design, but has an ordinary lamp shade that is similar to other lamp shades, the patent can only be infringed by a lamp design that includes a body that is the same or sufficiently similar to the patented body design, without regard to the similarities of the shades. Only those features that represent a design choice by the inventor not based on strictly functional necessities are considered in the infringement analysis. Strictly functional aspects cannot be a basis for design patentability or infringement, but in many cases functional aspects represent a choice between different alternatives, and may therefore be protectable. This is very different from trade dress infringement, where any functionality in the design precludes protection.
The owner of a design patent must mark the products covered by the design patent with the patent number in order to be able to recover damages for infringement. This marking places potential infringers on notice of the design patent. Then, if the design patent is infringed, the patent holder is entitled to pursue injunctions barring further infringement of the patent, including preliminary and permanent injunctions, and all of the same damages remedies that are available in the case of utility patent infringement under
35 U.S.C. § 284. These include compensatory damages to cure the damage done to the patent holder by the infringement with court costs. The court also has the discretion to increase the damages up to three times the amount of damages demonstrated in exceptional cases, such as where the infringer’s actions are willful and egregious. In addition to these standard remedies, design patents carry an additional powerful remedy under
35 U.S.C. § 289, which gives the patentee the ability to pursue the infringers profit for all sales of the infringing article. This is a punishing remedy that acts as a strong disincentive against infringement. The disgorgement of profits remedy has been interpreted by the court to be limited to the particular article of manufacture covered by the design shown in the patent, and not necessarily a composite product of which the patented article forms a part. See
Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 436 (2016). In cases where the design patent covers a component of an end product, the court will not necessarily award the entire profit made on the end product. The disgorged profits will more likely be the demonstrated proportion of the total profits that are attributable to the patented article.
Design patents protect the novel outward appearance of a design, and thus the drawings submitted with a design patent are critical. The patent attorneys and design patent professionals at Sierra IP Law, PC - Patents, Trademarks & Copyrights are familiar with these requirements and have developed in-house drafting talent to provide Sierra's clients with high quality renderings of their proprietary designs.
